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. 88424253 XVX(Standard Characters, see http://uspto.report/TM/88424253/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of (1) Applicant's argument; (2) Exhibit A - specimens for the Cited Mark; and (3) Exhibit B - articles and information describing Applicant, and the nature of its goods and services. has been attached.
Original PDF file:
evi_9819675243-20200130190057406521_._XVX-2d-ROA.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_9819675243-20200130190057406521_._Exhibt_A-XVX_Response.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_9819675243-20200130190057406521_._Exhibit_B-_XVX_response.pdf
Converted PDF file(s) ( 16 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware; computer programs; computer software, including computer software for transmission and communication purposes; electronic publications
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 hardware; Computer programs, namely, downloadable and recorded computer programs for the purposes of data transmission, data encryption, data processing, data communication or distributed computation, all in the field of computerized automation of financial transactions; computer programs; computer software, namely, downloadable and recorded computer software for the purposes of data transmission, data encryption, data processing, data communication or distributed computation, all in the field of computerized automation of financial transactions; computer software, including computer software for transmission and communication purposes; downloadable electronic publications, namely, technical guides, user guides, brochures, promotional materials, newsletters, product documentation, research papers and articles in the fields of computer software for the automation of financial transactions, cryptography, distributed technology, payments, payment systems, financial settlement, financial settlement systems, and capital and financial market infrastructure; electronic publicationsClass 009 for Computer programs, namely, downloadable and recorded computer programs for the purposes of data transmission, data encryption, data processing, data communication or distributed computation, all in the field of computerized automation of financial transactions; computer software, namely, downloadable and recorded computer software for the purposes of data transmission, data encryption, data processing, data communication or distributed computation, all in the field of computerized automation of financial transactions; downloadable electronic publications, namely, technical guides, user guides, brochures, promotional materials, newsletters, product documentation, research papers and articles in the fields of computer software for the automation of financial transactions, cryptography, distributed technology, payments, payment systems, financial settlement, financial settlement systems, and capital and financial market infrastructure
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK00003398242 registered 08/02/2019 with a renewal date of __________ and an expiration date of 05/10/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-9819675243-112621618_._trademark_registration-uk-xvx.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Transmission of data, messages and information by computer electronic mail; computer communication services; analogue and digital transmission of information; communication between computers and computer networks; electronic transmission of data, computer software and computer applications via the Internet and other communication networks
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: Transmission of data, messages and information by computer electronic mail; computer communication services; computer terminal communication services; analogue and digital transmission of information; communication between computers and computer networks; electronic transmission of data, computer software and computer applications via the Internet and other communication networksClass 038 for Transmission of data, messages and information by computer electronic mail; computer terminal communication services; analogue and digital transmission of information; communication between computers and computer networks; electronic transmission of data, computer software and computer applications via the Internet and other communication networks
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK00003398242 registered 08/02/2019 with a renewal date of __________ and an expiration date of 05/10/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-9819675243-112621618_._trademark_registration-uk-xvx.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Research and development of software relating to the computerised automation of financial transaction settlement; computer programming, consulting, technical assistance, support and maintenance services relating to computer programs; software development
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: Research and development of software relating to the computerised automation of financial transaction settlement; Research and development of software relating to the computerised automation of financial transactions; computer programming, consulting, technical assistance, support and maintenance services relating to computer programs; computer programming, consulting, and maintenance services relating to computer programs for the computerized automation of financial transactions; software development; software development relating to the computerised automation of financial transactions; computer technical assistance and support, namely, 24/7 help desk services and providing remote infrastructure management services for troubleshooting, monitoring, administration and management of computer programs for the automation of financial transactionsClass 042 for Research and development of software relating to the computerised automation of financial transactions; computer programming, consulting, and maintenance services relating to computer programs for the computerized automation of financial transactions; software development relating to the computerised automation of financial transactions; computer technical assistance and support, namely, 24/7 help desk services and providing remote infrastructure management services for troubleshooting, monitoring, administration and management of computer programs for the automation of financial transactions
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK00003398242 registered 08/02/2019 with a renewal date of __________ and an expiration date of 05/10/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-1-9819675243-112621618_._trademark_registration-uk-xvx.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: A. Reagan Fibbe. A. Reagan Fibbe of FIBBE LIGHTNER LLP, is located at

      3733-1 WESTHEIMER ROAD, NO. 1009
      HOUSTON, Texas 77027
      US

The phone number is 832-338-8090.

The fax number is 832-408-8558.

The email address is tm@fibbelightner.com

The applicants proposed attorney information: A. Reagan Fibbe. Other appointed attorneys are Robin Lightner Maisashvili. A. Reagan Fibbe of FIBBE LIGHTNER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      3733-1 WESTHEIMER ROAD, NO. 1009
      HOUSTON, Texas 77027
      United States

The phone number is 832-338-8090.

The fax number is 832-408-8558.

The email address is tm@fibbelightner.com

A. Reagan Fibbe 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: A. REAGAN FIBBE. A. REAGAN FIBBE of FIBBE LIGHTNER LLP, is located at

      3733-1 WESTHEIMER ROAD, NO. 1009
      HOUSTON, Texas 77027
      US

The phone number is 832-338-8090.

The fax number is 832-408-8558.

The email address is tm@fibbelightner.com; reagan@fibbelightner.com; robin@fibbelightner.com

The applicants proposed correspondence information: A. Reagan Fibbe. A. Reagan Fibbe of FIBBE LIGHTNER LLP, is located at

      3733-1 WESTHEIMER ROAD, NO. 1009
      HOUSTON, Texas 77027
      United States

The phone number is 832-338-8090.

The fax number is 832-408-8558.

The email address is tm@fibbelightner.com; reagan@fibbelightner.com; robin@fibbelightner.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
XVX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_9819675243-112621618_._XVX-us-trademark-declaration-20191118-xvx.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Robert Sams
Signatory's Position: CEO

Response Signature
Signature: /A. Reagan Fibbe/     Date: 01/30/2020
Signatory's Name: A. Reagan Fibbe
Signatory's Position: Attorney of Record, Texas bar member

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:    A. REAGAN FIBBE
   FIBBE LIGHTNER LLP
   
   3733-1 WESTHEIMER ROAD, NO. 1009
   HOUSTON, Texas 77027
Mailing Address:    A. Reagan Fibbe
   FIBBE LIGHTNER LLP
   3733-1 WESTHEIMER ROAD, NO. 1009
   HOUSTON, Texas 77027
        
Serial Number: 88424253
Internet Transmission Date: Thu Jan 30 19:23:41 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020013019234151
1900-88424253-7005459682b347b553755ca6e1
989dcc732b44e27eb168225199945e2835cda1b-
N/A-N/A-20200130190057406521