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. 88309130 MANULIFE (Stylized and/or with Design, see http://uspto.report/TM/88309130/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 036 for insurance services; reinsurance services; savings and retirement services, namely, financial administration of employee pension plans, business, stock option and pension valuation services, pension fund services, annuity services, and retirement fund financial management services; financial planning and financial management services; investment advisory and investment management services; wealth management services, and wealth creation services, namely, investment banking, financial investments in the field of securities, financial investments in the field of mutual funds, financial investments in the field of commodities, and financial placement of private equity funds for others, and private financial placement of securities and derivatives for others; trading in financial instruments, namely, commodity trading, currency trading, stock and bond trading, and mutual funds; private placement and capital market services; financial investment brokerage services for the selling of investment funds, mutual funds, pooled funds, hedge funds, wrap account products, segregated funds, and securities-based investment products by brokers, dealers and financial advisors; banking services; trust company services; credit and loan services; credit card services; real estate development, leasing of real estate, real estate management services, real estate investment services, mortgage services; providing websites, blogs, and social media sites providing information in the insurance and financial services fields
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.

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[ Canada application number 1917226 filed 08/29/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: insurance services; Insurance agency services, and insurance underwriting and administration services; reinsurance services; reinsurance underwriting and administration services; savings and retirement services, namely, financial administration of employee pension plans, business, stock option and pension valuation services, pension fund services, annuity services, and retirement fund financial management services; savings and retirement services, namely, financial administration of employee pension plans, business, stock option and pension valuation services; Financial management in the field of pension funds, annuity funds, and retirement funds; financial planning and financial management services; investment advisory and investment management services; trading in financial instruments, namely, commodity trading, currency trading, stock and bond trading, and mutual funds; wealth management services, and wealth creation services, namely, investment banking, financial investments in the field of securities, financial investments in the field of mutual funds, financial investments in the field of commodities, and financial placement of private equity funds for others, and private financial placement of securities and derivatives for others; private placement and capital market services; financial services being trading in financial instruments, namely, commodity trading, currency trading, stock and bond trading, and mutual fund trading for others; private placement and capital market services in the nature of private placements of hedge funds, private equity funds, securities and derivatives for others; financial investment brokerage services for the selling of investment funds, mutual funds, pooled funds, hedge funds, wrap account products, segregated funds, and securities-based investment products by brokers, dealers and financial advisors; banking services; trust company services; credit card services; credit and loan services; real estate development, leasing of real estate, real estate management services, real estate investment services, mortgage services; issuance of credit cards and credit card payment processing services; providing websites, blogs, and social media sites providing information in the insurance and financial services fields; leasing of real estate, real estate management services, real estate investment services; Mortgage financing and administration services; providing websites and social media websites featuring information in the field of insurance and financial services, providing a website featuring financial information via social mediaClass 036 for Insurance agency services, and insurance underwriting and administration services; reinsurance underwriting and administration services; savings and retirement services, namely, financial administration of employee pension plans, business, stock option and pension valuation services; Financial management in the field of pension funds, annuity funds, and retirement funds; financial planning and financial management services; investment advisory and investment management services; wealth management services, and wealth creation services, namely, investment banking, financial investments in the field of securities, financial investments in the field of mutual funds, financial investments in the field of commodities, and financial placement of private equity funds for others, and private financial placement of securities and derivatives for others; financial services being trading in financial instruments, namely, commodity trading, currency trading, stock and bond trading, and mutual fund trading for others; private placement and capital market services in the nature of private placements of hedge funds, private equity funds, securities and derivatives for others; financial investment brokerage services for the selling of investment funds, mutual funds, pooled funds, hedge funds, wrap account products, segregated funds, and securities-based investment products by brokers, dealers and financial advisors; banking services; trust company services; credit and loan services; issuance of credit cards and credit card payment processing services; leasing of real estate, real estate management services, real estate investment services; Mortgage financing and administration services; providing websites and social media websites featuring information in the field of insurance and financial services, providing a website featuring financial information via social media
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.

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 [ Canada application number 1917226 filed 08/29/2018]. 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.

The applicant's current attorney information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      US
The docket/reference number is 14420231US01.

The phone number is 612-336-4602.

The fax number is 612.332.9081.

The email address is dockmpls@merchantgould.com

The applicants proposed attorney information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      United States
The docket/reference number is 14420231US01.

The phone number is 612-336-4602.

The fax number is 612.332.9081.

The email address is dockmpls@merchantgould.com

Andrew S. Ehard submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: ANDREW S. EHARD. ANDREW S. EHARD of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      US
The docket/reference number is 14420231US01.

The phone number is 612-336-4602.

The fax number is 612.332.9081.

The email address is dockmpls@merchantgould.com

The applicants proposed correspondence information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      United States
The docket/reference number is 14420231US01.

The phone number is 612-336-4602.

The fax number is 612.332.9081.

The email address is dockmpls@merchantgould.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant requests suspension of the application pending issuance of the foreign registration.


SIGNATURE(S)
Response Signature
Signature: /Andrew S. Ehard/     Date: 08/09/2019
Signatory's Name: Andrew S. Ehard
Signatory's Position: Attorney for Applicant, MN Bar

Signatory's Phone Number: 612.336.4602

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:    ANDREW S. EHARD
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
Mailing Address:    Andrew S. Ehard
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
        
Serial Number: 88309130
Internet Transmission Date: Fri Aug 09 09:24:23 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908090924234
46366-88309130-610a05bc8ebd543e0141db8e0
5241a4a4e7962126c74a4e9abba929d75af4656a
53-N/A-N/A-20190809091914479300