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. 88385699 PROVENANCE(Standard Characters, see http://uspto.report/TM/88385699/mark.png) has been amended as follows:

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

The revised description of services obviates the basis for refusal in class 35. The suspension is inappropriate given the highly specialized nature of the services and the client's existing registration. Both references relate to investments and not supply chain management. Additionally, the existence of the Applicant's prior registration should help obviate any potential for consumer confusion. Additionally, the mark is suggestive of the services and not descriptive. Provenance refers to a place of origin. Lastly, there is no requirement for a URL to be included in a specimen. See the below link which shows the specimen in use: http://www.provenance.org/business/platform

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Business consulting services in the field of product transparency and traceability

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Consulting services in the design and implementation of computer-based information systems for businesses; Custom design and development of digital supply chain management solutions featuring blockchain technology; Design for others in the field of digital supply chain management solutions using blockchain technology; Providing on-line non-downloadable software for gathering and sharing information relating to digital supply chain management solutions featuring blockchain technology
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/00/2017 and first used in commerce at least as early as 06/00/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Consulting services in the design and implementation of computer-based information systems for businesses; Custom design and development of digital supply chain management solutions featuring blockchain technology; Custom design and development of software for digital supply chain management solutions featuring blockchain technology; Design for others in the field of digital supply chain management solutions using blockchain technology; Design for others in the field of software for digital supply chain management solutions using blockchain technology; Providing on-line non-downloadable software for gathering and sharing information relating to digital supply chain management solutions featuring blockchain technologyClass 042 for Consulting services in the design and implementation of computer-based information systems for businesses; Custom design and development of software for digital supply chain management solutions featuring blockchain technology; Design for others in the field of software for digital supply chain management solutions using blockchain technology; Providing on-line non-downloadable software for gathering and sharing information relating to digital supply chain management solutions featuring blockchain technology
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/00/2017 and first used in commerce at least as early as 06/00/2017 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: //Ben Natter//     Date: 07/23/2019
Signatory's Name: Ben Natter
Signatory's Position: Attorney of record, member NY bar

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: 88385699
Internet Transmission Date: Tue Jul 23 17:37:28 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20190723173728399
408-88385699-6207e07065d562c590c4384a3e9
8a134c3b3438149a71f51bd6f3bb64f9848598c-
N/A-N/A-20190723172831223889