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. 88303869 D POINT CARD (Stylized and/or with Design, see http://uspto.report/TM/88303869/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable animation, ring tones, music, electronic games, and image files in the field of automobiles, cats and dogs and sports for mobile phones; Downloadable databases in the field of payment processing and marketing; Computer operating programs, recorded; Downloadable ring tones for mobile phone; Consumer coupons downloaded from a global computer network; Computer game programs (software); Downloadable operating software in the nature of a mobile application for use global positioning systems (GPS) and communication networks; Computer application software for disseminating advertising for others; Computer application software for social networking services via internet; Computer application software for facilitating payment transactions by electronic means; Computer software for the identification and authentication; Computer firmware; Computer e-commerce software for facilitating commercial transaction; Computer operating systems; Encoded magnetic cards; Credit cards (encoded); Identity cards (encoded); Magnetic payment cards; Payment terminals, money dispensing and sorting devices; Credit card terminals; Smart card (integrated circuit cards) reader and writer
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: Downloadable animation, ring tones, music, electronic games, and image files in the field of automobiles, cats and dogs and sports for mobile phones; Downloadable animation audio and video files, ring tones, music, electronic games, and image files in the field of automobiles, cats and dogs and sports for mobile phones; Downloadable databases in the field of payment processing and marketing; Computer operating programs, recorded; Downloadable ring tones for mobile phone; Downloadable ring tones for mobile phones; Consumer coupons downloaded from a global computer network; Computer game programs (software); Downloadable computer game software programs; Recorded computer game software programs; Computer application software for disseminating advertising for others; Downloadable operating software in the nature of a mobile application for use global positioning systems (GPS) and communication networks; Computer application software for social networking services via internet; Recorded computer application software for disseminating advertising for others; Computer application software for facilitating payment transactions by electronic means; Downloadable computer application software for disseminating advertising for others; Computer software for the identification and authentication; Downloadable computer application software for use in conducting social networking services via the internet; Computer firmware; Recorded computer application software for use in conducting social networking services via internet; Computer e-commerce software for facilitating commercial transaction; Recorded computer application software for facilitating payment transactions by electronic means; Downloadable computer application software for facilitating payment transactions by electronic means; Encoded magnetic cards; Downloadable computer software for authenticating user identification; Credit cards (encoded); Recorded computer software for authenticating user identification; Identity cards (encoded); Recorded computer firmware for use in database management in the field of credit cards business; Magnetic payment cards; Recorded computer e-commerce software for facilitating commercial transactions; Payment terminals, money dispensing and sorting devices; Downloadable computer e-commerce software for facilitating commercial transaction; Credit card terminals; Computer operating systems; Smart card (integrated circuit cards) reader and writer; Magnetic coded cards for accessing computer networks; Magnetically encoded credit cards; Encoded identity cards, namely, magnetic identifying cards; Magnetic ID cards for use in connection with payment for services; Electronic payment terminals; Money dispensing and sorting devices, namely, automatic teller machines (ATMs); Credit card terminals, namely, electronic machines for reading credit cards and recording credit card financial transactions; Smart card reader-writers, namely, smart integrated circuit card readers that are also encoders for encoding the smart integrated circuit cardsClass 009 for Downloadable animation audio and video files, ring tones, music, electronic games, and image files in the field of automobiles, cats and dogs and sports for mobile phones; Downloadable databases in the field of payment processing and marketing; Computer operating programs, recorded; Downloadable ring tones for mobile phones; Consumer coupons downloaded from a global computer network; Downloadable computer game software programs; Recorded computer game software programs; Downloadable operating software in the nature of a mobile application for use global positioning systems (GPS) and communication networks; Recorded computer application software for disseminating advertising for others; Downloadable computer application software for disseminating advertising for others; Downloadable computer application software for use in conducting social networking services via the internet; Recorded computer application software for use in conducting social networking services via internet; Recorded computer application software for facilitating payment transactions by electronic means; Downloadable computer application software for facilitating payment transactions by electronic means; Downloadable computer software for authenticating user identification; Recorded computer software for authenticating user identification; Recorded computer firmware for use in database management in the field of credit cards business; Recorded computer e-commerce software for facilitating commercial transactions; Downloadable computer e-commerce software for facilitating commercial transaction; Computer operating systems; Magnetic coded cards for accessing computer networks; Magnetically encoded credit cards; Encoded identity cards, namely, magnetic identifying cards; Magnetic ID cards for use in connection with payment for services; Electronic payment terminals; Money dispensing and sorting devices, namely, automatic teller machines (ATMs); Credit card terminals, namely, electronic machines for reading credit cards and recording credit card financial transactions; Smart card reader-writers, namely, smart integrated circuit card readers that are also encoders for encoding the smart integrated circuit cards
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.

The applicant's current attorney information: Kazuyo Morita. Kazuyo Morita of HOLLAND & HART LLP, is located at

      ATTN: TRADEMARK DOCKETING
      P.O. BOX 8749
      DENVER, Colorado 80201
      US
The docket/reference number is 49854.0139.

The phone number is 303-473-2701.

The fax number is 303-473-2720.

The email address is docket@hollandhart.com

The applicants proposed attorney information: Kazuyo Morita. Other appointed attorneys are Scott S. Havlick; Andrea Anderson; Ester Martin; Andrew A. Roppel; Larry H. Tronco; Matt Horlacher; Betsy D. Bengtson; Hope I. Hamilton, Madelon Lapidus; Jeff Larson. Kazuyo Morita of Holland & Hart 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

      Attn: Trademark Docketing
      P.O. Box 8749
      Denver, Colorado 80201
      United States
The docket/reference number is 49854.0139.

The phone number is 303-473-2701.

The fax number is 303-473-2720.

The email address is docket@hollandhart.com

Kazuyo Morita 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.
The applicant's current correspondence information: KAZUYO MORITA. KAZUYO MORITA of HOLLAND & HART LLP, is located at

      ATTN: TRADEMARK DOCKETING
      P.O. BOX 8749
      DENVER, Colorado 80201
      US
The docket/reference number is 49854.0139.

The phone number is 303-473-2701.

The fax number is 303-473-2720.

The email address is docket@hollandhart.com

The applicants proposed correspondence information: Kazuyo Morita. Kazuyo Morita of Holland & Hart LLP, is located at

      Attn: Trademark Docketing
      P.O. Box 8749
      Denver, Colorado 80201
      United States
The docket/reference number is 49854.0139.

The phone number is 303-473-2701.

The fax number is 303-473-2720.

The email address is docket@hollandhart.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use POINT CARD apart from the mark as shown.


Miscellaneous Statement
Applicant seeks to avoid the expense of having to respond to the Information Requirement by expanding the requested disclaimer to all the goods in the Application. Specifically, the Office Action requests partial disclaimer of "POINT CARD" as it relates to specific goods in the Application and included an Information Requirement. Applicant has now entered a disclaimer of "POINT CARD" for ALL the goods in the Application. Applicant believes this should moot the Examining Attorney's Information Requirement and that this Applicant is now in condition to be approved for publication and ultimately registration on the Principal Register.


SIGNATURE(S)
Response Signature
Signature: /Kazuyo Morita/     Date: 10/01/2019
Signatory's Name: Kazuyo Morita
Signatory's Position: Attorney for Applicant, Colorado Bar Member

Signatory's Phone Number: 3034732701

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:    KAZUYO MORITA
   HOLLAND & HART LLP
   ATTN: TRADEMARK DOCKETING
   P.O. BOX 8749
   DENVER, Colorado 80201
Mailing Address:    Kazuyo Morita
   Holland & Hart LLP
   Attn: Trademark Docketing
   P.O. Box 8749
   Denver, Colorado 80201
        
Serial Number: 88303869
Internet Transmission Date: Tue Oct 01 13:31:33 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019100113313393
1493-88303869-6107e589d9f02036ba02b40d4e
2706a48afa2476f91f232fe2b11e1217072fc-N/
A-N/A-20191001133102168722