Response to Office Action

MYLIFEPATH

BlackRock Institutional Trust Company, N.A.

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88323943
LAW OFFICE ASSIGNED LAW OFFICE 124
MARK SECTION
MARK http://uspto.report/TM/88323943/mark.png
LITERAL ELEMENT MYLIFEPATH
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Computer software and mobile applications for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; computer software and mobile applications used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; downloadable computer software and mobile applications to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Computer software and mobile applications for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; Downloadable computer software and downloadable mobile application software for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; computer software and mobile applications used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; Downloadable computer software and downloadable mobile application software used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; downloadable computer software and mobile applications to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; Downloadable computer software and downloadable mobile application software to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments; Downloadable computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments
FINAL DESCRIPTION
Downloadable computer software and downloadable mobile application software for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; Downloadable computer software and downloadable mobile application software used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; Downloadable computer software and downloadable mobile application software to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; Downloadable computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (036)(no change)
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans; Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for providing information in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans
FINAL DESCRIPTION
Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for providing information in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans
FILING BASIS Section 1(b)
SIGNATURE SECTION
RESPONSE SIGNATURE /Christopher J Hoolehan/
SIGNATORY'S NAME Christopher J. Hoolehan
SIGNATORY'S POSITION Attorney of record, Massachusetts and New York bar member
DATE SIGNED 06/19/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Jun 19 17:37:12 EDT 2019
TEAS STAMP USPTO/ROA-XXX.XXX.XXX.XXX
-20190619173712045816-883
23943-6207ed855c89f9e320e
f2f10de6823e468243ad17b01
970f8a01d25dd7c6885d-N/A-
N/A-20190619173057882220



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. 88323943 MYLIFEPATH(Standard Characters, see http://uspto.report/TM/88323943/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 Computer software and mobile applications for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; computer software and mobile applications used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; downloadable computer software and mobile applications to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments
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: Computer software and mobile applications for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; Downloadable computer software and downloadable mobile application software for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; computer software and mobile applications used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; Downloadable computer software and downloadable mobile application software used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; downloadable computer software and mobile applications to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; Downloadable computer software and downloadable mobile application software to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments; Downloadable computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instrumentsClass 009 for Downloadable computer software and downloadable mobile application software for use by others in rendering financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of financial risk management, financial management and investment management; Downloadable computer software and downloadable mobile application software used in connection with financial services, namely, software for collecting, analyzing, organizing, storing and transmitting data and information in the fields of personal financial planning, personal financial management, personal investment management, retirement planning, personal savings and loans; Downloadable computer software and downloadable mobile application software to search and display information relating to financial trading in securities, options, futures, stocks, shares, foreign exchange and other financial instruments; Downloadable computer software trading platforms for placing and executing orders to purchase or sell securities, options, futures, foreign exchange and other financial instruments
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 Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans
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: Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans; Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for providing information in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loansClass 042 for Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for providing information in the field of financial services, namely, risk management, financial information, financial management, securities trading, investment management services, retirement planning, personal savings and loans
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.

SIGNATURE(S)
Response Signature
Signature: /Christopher J Hoolehan/     Date: 06/19/2019
Signatory's Name: Christopher J. Hoolehan
Signatory's Position: Attorney of record, Massachusetts and New York bar member

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: 88323943
Internet Transmission Date: Wed Jun 19 17:37:12 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190619173712
045816-88323943-6207ed855c89f9e320ef2f10
de6823e468243ad17b01970f8a01d25dd7c6885d
-N/A-N/A-20190619173057882220



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