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. 88403744 PURE(Standard Characters, see http://uspto.report/TM/88403744/mark.png) has been amended as follows:

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

Applicant respectfully requests removal of the 2(d) refusal. Applicant also respectfully requests removal of the pending application citations. Applicant's argument is attached in the evidence section by PDF. Please contact the undersigned with any questions.

EVIDENCE
Evidence in the nature of Applicant's argument and dictionary definition of PUR has been attached.
Original PDF file:
evi_20414870202-20200115173608464485_._Office_Action_Response.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_20414870202-20200115173608464485_._Pur___Definition_of_Pur_at_Dictionary.com.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 025 for Wearing apparel, namely, sweatshirts, tee-shirts; shorts; shirts; pants; jackets, hats

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Advertising; commercial business management; commercial administration; dissemination of advertising material; presentation of goods on all communication media, for retail sale; web site traffic optimization; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; rental of advertising time on all communication media; publication of advertising texts; rental of advertising space; dissemination of advertisements; public relations; updating and maintenance of data in computer databases; updating and maintenance of data in registers; systematization of information in computer databases; business consulting

Applicant hereby deletes the following class of goods/services from the application.
Class 038 for Communication services, namely, electronic transmission of data and documents among users of computers; Computer aided transmission of messages and images; Transmission of digital files; Communications by computer terminals; Electronic message sending; Providing access to databases; Providing multiple-user access to a global computer information network; Providing user access to global computer networks; Transmission of electronic mai

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for downloadable computer software application for use as a cryptocurrency wallet; Computer software for managing cryptocurrency transactions, namely, for making cryptocurrency transfers and payments using blockchain technology; Computer application software for smartphones, namely, software for making cryptocurrency transfers using blockchain technology; Cryptocurrency security and management tools, namely, labels in the nature of a printed metal foil for use as an offline cryptocurrency wallet, with said labels carrying magnetically or optically encoded information
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: Downloadable computer software application for use as a cryptocurrency wallet; Computer software for managing cryptocurrency transactions, namely, for making cryptocurrency transfers and payments using blockchain technology; downloadable computer software for managing cryptocurrency transactions, namely, for making cryptocurrency transfers and payments using blockchain technology; Computer application software for smartphones, namely, software for making cryptocurrency transfers using blockchain technology; downloadable computer application software for smartphones, namely, software for making cryptocurrency transfers using blockchain technology; Cryptocurrency security and management tools, namely, labels in the nature of a printed metal foil for use as an offline cryptocurrency wallet, with said labels carrying magnetically or optically encoded information; Cryptocurrency security and management tools, namely, encoded labels in the nature of a printed metal foil for use as an offline cryptocurrency wallet, with said labels carrying magnetically or optically encoded informationClass 009 for Downloadable computer software application for use as a cryptocurrency wallet; downloadable computer software for managing cryptocurrency transactions, namely, for making cryptocurrency transfers and payments using blockchain technology; downloadable computer application software for smartphones, namely, software for making cryptocurrency transfers using blockchain technology; Cryptocurrency security and management tools, namely, encoded labels in the nature of a printed metal foil for use as an offline cryptocurrency wallet, with said labels carrying magnetically or optically encoded information
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 financial information services; financial trading risk management in the field of electronic financial trading of digitized assets in the nature of digital currency; electronic financial trading services; electronic financial trading services in the field of digitized assets in the nature of digital currency; financial information provided by electronic means; providing on-demand and real-time financial information about digitized assets in the nature of digital currency; virtual currency exchange services; providing an internet website in the field of digital securities exchange services; financial services, namely, issuing and trading digitized currency; clearing and reconciling financial transactions via electronic communications networks; providing monetary exchange services, namely, exchanging digitized assets in the nature of digital currency; financial services, namely, financial management and administration of instruments used to invest in cryptocurrency; Financial information provided by electronic means in the field of virtual currencies and other types of financial transactions using blockchain, smart contract, and distributed systems
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: financial information services; financial trading risk management in the field of electronic financial trading of digitized assets in the nature of digital currency; electronic financial trading services in the field of digitized assets in the nature of digital currency; electronic financial trading services; providing on-demand and real-time financial information about digitized assets in the nature of digital currency; virtual currency exchange services; financial information provided by electronic means; providing an internet website in the field of digital securities exchange services being financial information in the nature of digital currency; financial services, namely, issuing and trading digitized currency; providing monetary exchange services, namely, exchanging digitized assets in the nature of digital currency; providing an internet website in the field of digital securities exchange services; financial services, namely, financial management and administration of instruments used to invest in cryptocurrency; Financial information provided by electronic means in the field of virtual currencies and other types of financial transactions using blockchain, smart contract, and distributed systems; clearing and reconciling financial transactions via electronic communications networksClass 036 for financial trading risk management in the field of electronic financial trading of digitized assets in the nature of digital currency; electronic financial trading services in the field of digitized assets in the nature of digital currency; providing on-demand and real-time financial information about digitized assets in the nature of digital currency; virtual currency exchange services; providing an internet website in the field of digital securities exchange services being financial information in the nature of digital currency; financial services, namely, issuing and trading digitized currency; providing monetary exchange services, namely, exchanging digitized assets in the nature of digital currency; financial services, namely, financial management and administration of instruments used to invest in cryptocurrency; Financial information provided by electronic means in the field of virtual currencies and other types of financial transactions using blockchain, smart contract, and distributed systems
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 Software as a service (SAAS) services featuring software for use as a cryptocurrency wallet; Technological consulting in the field of cryptocurrency; Non-downloadable software, namely, providing temporary use of non-downloadable software for enabling users to securely create, trade, clear, settle and authenticate digital currency transactions; computer software platform for providing cryptographic communications and the encrypted transfer and review of digital currency; Software as a service (SAAS) for enabling cryptographic communications and the encrypted transfer and review of digital currency; Providing temporary use of online, non-downloadable software for interfacing with peer-to-peer networks, for data and digital file uploads, for maintaining the security and integrity of digital files and data and for capturing various types of digital files and data, for transferring data and digital files, for use in verifying a chain of custody; Software as a service (SAAS) services featuring software for interfacing with peer-to-peer networks, for data and digital file uploads, for maintaining the security and integrity of digital files and data and for capturing various types of digital files and data, for transferring data and digital files, for use in verifying a chain of custody; Providing temporary use of on-line non-downloadable software for use in accessing, reading, tracking, and using blockchain technology; Providing temporary use of on-line non-downloadable computer software for identity management
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: Software as a service (SAAS) services featuring software for use as a cryptocurrency wallet; Software as a service (SAAS) services featuring software for use as a cryptocurrency ¶
Software as a service (SAAS) services featuring software for use as a cryptocurrency wallet; Technological consulting in the field of cryptocurrency; Non-downloadable software, namely, providing temporary use of non-downloadable software for enabling users to securely create, trade, clear, settle and authenticate digital currency transactions; computer software platform for providing cryptographic communications and the encrypted transfer and review of digital currency; Software as a service (SAAS) for enabling cryptographic communications and the encrypted transfer and review of digital currency; Providing temporary use of online, non-downloadable software for interfacing with peer-to-peer networks, for data and digital file uploads, for maintaining the security and integrity of digital files and data and for capturing various types of digital files and data, for transferring data and digital files, for use in verifying a chain of custody; Providing temporary use of on-line non-downloadable software for use in accessing, reading, tracking, and using blockchain technology; Software as a service (SAAS) services featuring software for interfacing with peer-to-peer networks, for data and digital file uploads, for maintaining the security and integrity of digital files and data and for capturing various types of digital files and data, for transferring data and digital files, for use in verifying a chain of custody; Providing temporary use of on-line non-downloadable computer software for identity managementClass 042 for Software as a service (SAAS) services featuring software for use as a cryptocurrency Software as a service (SAAS) services featuring software for use as a cryptocurrency wallet; Technological consulting in the field of cryptocurrency; Non-downloadable software, namely, providing temporary use of non-downloadable software for enabling users to securely create, trade, clear, settle and authenticate digital currency transactions; computer software platform for providing cryptographic communications and the encrypted transfer and review of digital currency; Software as a service (SAAS) for enabling cryptographic communications and the encrypted transfer and review of digital currency; Providing temporary use of on-line non-downloadable software for use in accessing, reading, tracking, and using blockchain technology
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.

The applicant's current attorney information: Daniel P. Mullarkey. Daniel P. Mullarkey of POLSINELLI PC, is located at

      1401 I STREET, NW, SUITE 800
      WASHINGTON, District of Columbia 20005
      US

The phone number is 202-626-8305.

The email address is trademarkdocketing@polsinelli.com

The applicants proposed attorney information: Daniel P. Mullarkey. Other appointed attorneys are Rachel Rice, Monica Gutierrez, Matthew Smith, Adam Weiss, Matt Todd, Laila Wolfgram, Philip Hampton, and other attorneys at the firm. Daniel P. Mullarkey of Polsinelli PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1401 I Street, NW, Suite 800
      Washington, District of Columbia 20005
      United States
The docket/reference number is 103286623612.

The phone number is 202-626-8305.

The email address is trademarkdocketing@polsinelli.com

Daniel P. Mullarkey 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: DANIEL P. MULLARKEY. DANIEL P. MULLARKEY of POLSINELLI PC, is located at

      1401 I STREET, NW, SUITE 800
      WASHINGTON, District of Columbia 20005
      US

The phone number is 202-626-8305.

The email address is trademarkdocketing@polsinelli.com; dmullarkey@polsinelli.com; lcimino@polsinelli.com

The applicants proposed correspondence information: Daniel P. Mullarkey. Daniel P. Mullarkey of Polsinelli PC, is located at

      1401 I Street, NW, Suite 800
      Washington, District of Columbia 20005
      United States
The docket/reference number is 103286623612.

The phone number is 202-626-8305.

The email address is trademarkdocketing@polsinelli.com; lcimino@polsinelli.com; dmullarkey@polsinelli.com

SIGNATURE(S)
Response Signature
Signature: /daniel mullarkey/     Date: 01/15/2020
Signatory's Name: Daniel P. Mullarkey
Signatory's Position: Attorney of Record, member of Virginia Bar

Signatory's Phone Number: 2026268305

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:    DANIEL P. MULLARKEY
   POLSINELLI PC
   
   1401 I STREET, NW, SUITE 800
   WASHINGTON, District of Columbia 20005
Mailing Address:    Daniel P. Mullarkey
   Polsinelli PC
   1401 I Street, NW, Suite 800
   Washington, District of Columbia 20005
        
Serial Number: 88403744
Internet Transmission Date: Wed Jan 15 17:49:37 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202001151749372
03576-88403744-700cec70cc86454787dbb1997
0558c7e78288a13ccc2c91546e9589c3797517e4
-N/A-N/A-20200115173608464485