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. 88336001 ISHARES (Stylized and/or with Design, see http://uspto.report/TM/88336001/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 downloadable 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 downloadable 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, and retirement planning; 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 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 downloadable 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 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 downloadable 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, and retirement planning; downloadable computer software and downloadable 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, and retirement planning; 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 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 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 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, and retirement planning; 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 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 035 for Providing information and analysis relating to economic market data; providing and updating a financial index; providing financial indices based on selected groups of securities; providing and updating a financial index of securities values and classification, analysis, and reporting thereof; providing business development information and advice to financial professionals; business advice and information; market analysis; compiling financial, securities, stock exchange, trade and quote, index value and other financial market information for business purposes; analyzing and compiling data for measuring the performance of financial markets
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 information and analysis relating to economic market data; Providing economic information and analysis for business purposes, relating to economic market data; providing and updating a financial index; providing financial indices based on selected groups of securities; providing and updating a financial index of securities values and classification, analysis, and reporting thereof; providing business development information and advice to financial professionals; business advice and information; market analysis; compiling financial, securities, stock exchange, trade and quote, index value and other financial market information for business purposes; analyzing and compiling data for measuring the performance of financial marketsClass 035 for Providing economic information and analysis for business purposes, relating to economic market data; providing and updating a financial index; providing financial indices based on selected groups of securities; providing and updating a financial index of securities values and classification, analysis, and reporting thereof; providing business development information and advice to financial professionals; business advice and information; market analysis; compiling financial, securities, stock exchange, trade and quote, index value and other financial market information for business purposes; analyzing and compiling data for measuring the performance of financial markets
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 036 for Investment management services; Funds investment; Financial services, namely, financial asset evaluation; Financial services, namely, providing financial and investment information, financial and investment management, financial and investment advice, and financial and investment analysis; Funds evaluation and performance monitoring in the nature of monitoring financial markets for investment purposes; Financial risk management; Financial investment services, namely, evaluation, analysis, and comparison of investment funds for others; Providing financial information in the field of investment opportunities; Providing an interactive website featuring information and links relating to investment advisory services, investment management services, and financial risk management; Financial and investment information provided by electronic means; Mutual fund investment and financial management, investment, analysis and consultation in the field of securities, real estate, funds and mutual funds; Financial advisory services, namely, the structuring, distribution, management and administration of investments, namely, target date funds, exchange traded funds, mutual funds, commodity funds, pooled funds, hedge funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products; financial products services, namely, brokerage, advisory, distribution, administration, management and trustee services for mutual funds, commodity funds, pooled funds, hedge funds, exchange traded funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products; Financial custody services, namely, maintaining possession of financial assets in the nature of mutual funds, commodity funds, pooled funds, hedge funds, exchange traded funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products for others for financial management purposes
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: Investment management services; Funds investment; Financial services, namely, financial asset evaluation; Financial services, namely, providing financial and investment information, financial and investment management, financial and investment advice, and financial and investment analysis; Funds evaluation and performance monitoring in the nature of monitoring financial markets for investment purposes; Financial risk management; Financial investment services, namely, evaluation, analysis, and comparison of investment funds for others; Providing financial information in the field of investment opportunities; Providing an interactive website featuring information and links relating to investment advisory services, investment management services, and financial risk management; Providing an interactive website featuring advice and information in the fields of investment advisory, investment management and financial risk management; Financial and investment information provided by electronic means; Mutual fund investment and financial management, investment, analysis and consultation in the field of securities, real estate, funds and mutual funds; Financial advisory services, namely, the structuring, distribution, management and administration of investments, namely, target date funds, exchange traded funds, mutual funds, commodity funds, pooled funds, hedge funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products; financial products services, namely, brokerage, advisory, distribution, administration, management and trustee services for mutual funds, commodity funds, pooled funds, hedge funds, exchange traded funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products; Financial custody services, namely, maintaining possession of financial assets in the nature of mutual funds, commodity funds, pooled funds, hedge funds, exchange traded funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products for others for financial management purposesClass 036 for Investment management services; Funds investment; Financial services, namely, financial asset evaluation; Financial services, namely, providing financial and investment information, financial and investment management, financial and investment advice, and financial and investment analysis; Funds evaluation and performance monitoring in the nature of monitoring financial markets for investment purposes; Financial risk management; Financial investment services, namely, evaluation, analysis, and comparison of investment funds for others; Providing financial information in the field of investment opportunities; Providing an interactive website featuring advice and information in the fields of investment advisory, investment management and financial risk management; Financial and investment information provided by electronic means; Mutual fund investment and financial management, investment, analysis and consultation in the field of securities, real estate, funds and mutual funds; Financial advisory services, namely, the structuring, distribution, management and administration of investments, namely, target date funds, exchange traded funds, mutual funds, commodity funds, pooled funds, hedge funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products; financial products services, namely, brokerage, advisory, distribution, administration, management and trustee services for mutual funds, commodity funds, pooled funds, hedge funds, exchange traded funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products; Financial custody services, namely, maintaining possession of financial assets in the nature of mutual funds, commodity funds, pooled funds, hedge funds, exchange traded funds, closed-end funds, principal protected notes, wrap account products, segregated funds, securities and securities-based investment products for others for financial management purposes
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, and retirement planning
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, and retirement planning; Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for use in the field of financial services, namely, for risk management, providing financial information, financial management, securities trading, investment management services, and retirement planningClass 042 for Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for use in the field of financial services, namely, for risk management, providing financial information, financial management, securities trading, investment management services, and retirement planning
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: 07/25/2019
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: 88336001
Internet Transmission Date: Thu Jul 25 08:38:42 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190725083842
934884-88336001-62034e8fc68a88ed114a2ee7
8a6db4ca88c6a497863dd44f2b3ca42cc81eb219
ea-N/A-N/A-20190725083346801163