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. 88399659 BBVA (Stylized and/or with Design, see http://uspto.report/TM/88399659/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 Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Mechanisms for coin-operated apparatus; Cash registers, calculating devices; Computers and computer peripheral devices; Diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; Fire-extinguishing apparatus
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[ Nicaragua application number 2019000757 filed 03/22/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments, namely, microscopes, cameras; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; Apparatus and instruments for recording, transmission, processing and reproduction of sound, images or data; Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; Digital media, namely, prerecorded videotapes, compact discs, digital video discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring financial services and assessment and insurance services; Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Blank digital storage media; Mechanisms for coin-operated apparatus; Blank electronic storage media; Cash registers, calculating devices; Blank recordable DVDs; Computers and computer peripheral devices; Blank recordable optical discs; Diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; Blank CD-ROMs for sound or video recording; Fire-extinguishing apparatus; Downloadable computer software, namely, downloadable interactive software in the field of financial, real estate and insurance services; Calculating machinesClass 009 for Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments, namely, microscopes, cameras; Apparatus and instruments for recording, transmission, processing and reproduction of sound, images or data; Digital media, namely, prerecorded videotapes, compact discs, digital video discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring financial services and assessment and insurance services; Blank digital storage media; Blank electronic storage media; Blank recordable DVDs; Blank recordable optical discs; Blank CD-ROMs for sound or video recording; Downloadable computer software, namely, downloadable interactive software in the field of financial, real estate and insurance services; Calculating machines
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 [ Nicaragua application number 2019000757 filed 03/22/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Insurance; Financial affairs; Monetary affairs; Real estate affairs
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[ Nicaragua application number 2019000757 filed 03/22/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Insurance; Insurance, namely, insurance information, insurance consultancy, insurance brokerage; Financial affairs; Financial affairs, namely, financial information, financial analysis, financial advice, financial consulting, financial planning, financial research, financial management, financial trust planning, financial portfolio analysis services, financial portfolio management, financial information and evaluations, financial investment brokerage, financial analysis and consultation; Monetary affairs; Monetary affairs, namely, financial information, monetary exchange, monetary strategy consultation and research.; Real estate affairs; Real estate affairs, namely, real estate management services, real estate consultation, real estate appraisal, real estate lending services, real estate investment services, real estate brokerage; Providing information and advice in the field of finance, financial investments, financial valuationsClass 036 for Insurance, namely, insurance information, insurance consultancy, insurance brokerage; Financial affairs, namely, financial information, financial analysis, financial advice, financial consulting, financial planning, financial research, financial management, financial trust planning, financial portfolio analysis services, financial portfolio management, financial information and evaluations, financial investment brokerage, financial analysis and consultation; Monetary affairs, namely, financial information, monetary exchange, monetary strategy consultation and research.; Real estate affairs, namely, real estate management services, real estate consultation, real estate appraisal, real estate lending services, real estate investment services, real estate brokerage; Providing information and advice in the field of finance, financial investments, financial valuations
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 [ Nicaragua application number 2019000757 filed 03/22/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education; Providing of training; Entertainment; Sporting and cultural activities
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[ Nicaragua application number 2019000757 filed 03/22/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Education; Educational services, namely, providing seminars in the field of real estate, financial and banking activities, entrepreneurs, insurance services, company management; Providing of training; Educational services, namely, providing on-line training in the field of banking, credit, money management, investing, investments and financial matters via the Internet and materials distributed in connection therewith; Entertainment; Providing of training, namely, providing of computer training, financial and banking activities; Sporting and cultural activities; Entertainment services, namely, presenting live musical performances, presentation of seminars, lectures, workshops and panel discussions in the field of financial information; Sporting and cultural activities, namely, arranging community sporting and cultural activities, film and theater festivals, art exhibitions, summer sport camps, competitions of athletics, basketball, football and soccer, organization of exhibitions for cultural and educational purposesClass 041 for Educational services, namely, providing seminars in the field of real estate, financial and banking activities, entrepreneurs, insurance services, company management; Educational services, namely, providing on-line training in the field of banking, credit, money management, investing, investments and financial matters via the Internet and materials distributed in connection therewith; Providing of training, namely, providing of computer training, financial and banking activities; Entertainment services, namely, presenting live musical performances, presentation of seminars, lectures, workshops and panel discussions in the field of financial information; Sporting and cultural activities, namely, arranging community sporting and cultural activities, film and theater festivals, art exhibitions, summer sport camps, competitions of athletics, basketball, football and soccer, organization of exhibitions for cultural and educational 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.

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 [ Nicaragua application number 2019000757 filed 03/22/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

The applicant's current attorney information: Jeffrey H. Handelsman. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      US
The docket/reference number is T57684.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

The applicants proposed attorney information: Jeffrey H. Handelsman. Other appointed attorneys are Neil F. Greenblum; Bruce H. Bernstein; William S. Boshnick; Jill M. Browning; and the attorneys of Greenblum & Bernstein, P.L.C.. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      United States
The docket/reference number is T57684.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

Jeffrey H. Handelsman 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: JEFFREY H. HANDELSMAN. JEFFREY H. HANDELSMAN of GREENBLUM & BERNSTEIN, P.L.C., is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      US
The docket/reference number is T57684.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

The applicants proposed correspondence information: Jeffrey H. Handelsman. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      United States
The docket/reference number is T57684.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
With regard to the Examiner's requirement to clarify the filing basis, Applicant advises that it does not intend to rely on Section 44(e) as a basis for registration but still wants to retain the Section 44(d) priority filing date. Applicant will file an Amendment to Allege Use after the application has been approved for publication.


SIGNATURE(S)
Response Signature
Signature: /Jeffrey H. Handelsman/     Date: 12/06/2019
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for Applicant, MD Bar (Ref.: T57684)

Signatory's Phone Number: 703-716-1191

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:    JEFFREY H. HANDELSMAN
   GREENBLUM & BERNSTEIN, P.L.C.
   
   1950 ROLAND CLARKE PLACE
   RESTON, Virginia 20191-1411
Mailing Address:    Jeffrey H. Handelsman
   GREENBLUM & BERNSTEIN, P.L.C.
   1950 ROLAND CLARKE PLACE
   RESTON, Virginia 20191-1411
        
Serial Number: 88399659
Internet Transmission Date: Fri Dec 06 14:52:45 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191206145245
853880-88399659-7001bdc41987b91a739d3d56
ea7e5f8add330a083241f45a3c33f21ab6e1417-
N/A-N/A-20191206144112560208