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)

---

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. 88424500 VFV(Standard Characters, see http://uspto.report/TM/88424500/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; Downloadable electronic publications; downloadable computer software for managing cryptocurrency transactions; downloadable computer software for managing cryptocurrency; downloadable computer software featuring blockchain technology
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; Downloadable computer software for managing and validating investment transactions; Downloadable electronic publications; downloadable computer software for distribution and automation of investment management data; downloadable computer software for managing cryptocurrency transactions; Downloadable electronic publications in the nature of reports, white papers, brochures, manuals, and written presentations in the fields of blockchain and investment management platform technologies, and distribution and automation of investment management data; downloadable computer software for managing cryptocurrency; downloadable computer software for managing and validating investment transactions using blockchain technology; downloadable computer software featuring blockchain technologyClass 009 for Downloadable computer software for managing and validating investment transactions; downloadable computer software for distribution and automation of investment management data; Downloadable electronic publications in the nature of reports, white papers, brochures, manuals, and written presentations in the fields of blockchain and investment management platform technologies, and distribution and automation of investment management data; downloadable computer software for managing and validating investment transactions 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for investment of funds; investment management; financial asset management; wealth management; financial risk assessment; financial risk management; financial investment brokerage; financial custody services in the nature of maintaining possession of financial assets for others for financial management purposes; actuarial, financial, and investment advisory; financial retirement planning; financial planning; financial and investment consultation; investment transactions and processing in the nature of investment fund transfer and transaction services; providing information, research, and news in the field of finance and financial investments; providing an interactive website and online computer database in the fields of investing, finance, saving, financial planning, financial retirement planning, financial portfolio management, financial decision making, and financial risk management; cryptocurrency services; financial investment in the field of cryptocurrencies; financial consulting in the field of cryptocurrency; cryptocurrency services
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 of funds; investment management; financial asset management; wealth management; financial risk assessment; financial risk management; financial investment brokerage; financial custody services in the nature of maintaining possession of financial assets for others for financial management purposes; actuarial, financial, and investment advisory; financial retirement planning; financial planning; financial and investment consultation; investment transactions and processing in the nature of investment fund transfer and transaction services; providing information, research, and news in the field of finance and financial investments; providing an interactive website and online computer database in the fields of investing, finance, saving, financial planning, financial retirement planning, financial portfolio management, financial decision making, and financial risk management; cryptocurrency services; financial investment in the field of cryptocurrencies; financial consulting in the field of cryptocurrency; cryptocurrency servicesClass 036 for investment of funds; investment management; financial asset management; wealth management; financial risk assessment; financial risk management; financial investment brokerage; financial custody services in the nature of maintaining possession of financial assets for others for financial management purposes; actuarial, financial, and investment advisory; financial retirement planning; financial planning; financial and investment consultation; investment transactions and processing in the nature of investment fund transfer and transaction services; providing information, research, and news in the field of finance and financial investments; providing an interactive website and online computer database in the fields of investing, finance, saving, financial planning, financial retirement planning, financial portfolio management, financial decision making, and financial risk management
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; non-downloadable computer software; installation, maintenance and updating of computer software; computer programming; software design and development; technical support services, namely, troubleshooting of computer software problems and troubleshooting of web and database software applications; computer software consulting; computer and internet security services, namely, restricting unauthorized access to computer networks and websites; computer security consultancy, and internet security consultancy; data security services, namely, data security consultancy; design and development of electronic data security systems; computer security threat analysis for protecting data; authentication, issuance and validation of digital certificates; downloadable computer software for managing cryptocurrency transactions; technological consulting in the field of cryptocurrency; non-downloadable computer software for managing cryptocurrency; non-downloadable computer software featuring blockchain technology; technological consulting in the field of blockchain technology
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; Software as a service (SAAS) services featuring software for managing and validating investment transactions; non-downloadable computer software; Providing on-line non-downloadable computer software for distribution and automation of investment management data; installation, maintenance and updating of computer software; computer programming; software design and development; technical support services, namely, troubleshooting of computer software problems and troubleshooting of web and database software applications; computer software consulting; computer and internet security services, namely, restricting unauthorized access to computer networks and websites; computer security consultancy, and internet security consultancy; data security services, namely, data security consultancy; design and development of electronic data security systems; computer security threat analysis for protecting data; authentication, issuance and validation of digital certificates; downloadable computer software for managing cryptocurrency transactions; Providing on-line non-downloadable computer software for managing and validating investment transactions using blockchain technology; technological consulting in the field of cryptocurrency; technological consulting in the field of blockchain technology; non-downloadable computer software for managing cryptocurrency; non-downloadable computer software featuring blockchain technologyClass 042 for Software as a service (SAAS) services featuring software for managing and validating investment transactions; Providing on-line non-downloadable computer software for distribution and automation of investment management data; installation, maintenance and updating of computer software; computer programming; software design and development; technical support services, namely, troubleshooting of computer software problems and troubleshooting of web and database software applications; computer software consulting; computer and internet security services, namely, restricting unauthorized access to computer networks and websites; computer security consultancy, and internet security consultancy; data security services, namely, data security consultancy; design and development of electronic data security systems; computer security threat analysis for protecting data; authentication, issuance and validation of digital certificates; Providing on-line non-downloadable computer software for managing and validating investment transactions using blockchain technology; technological consulting in the field of 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: David M. Kelly. David M. Kelly of KELLY IP LLP, is located at

      1300 19TH STREET, NW, SUITE 300
      SUITE 300
      WASHINGTON, District of Columbia 20036
      US
The docket/reference number is 235.0178.

The phone number is 202-808-3570.

The fax number is 202.354-5232.

The email address is Vanguarddocketing@kelly-ip.com

The applicants proposed attorney information: David M. Kelly. David M. Kelly of KELLY IP LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1300 19TH STREET, NW, SUITE 300
      WASHINGTON, District of Columbia 20036
      United States
The docket/reference number is 235.0178.

The phone number is 202-808-3570.

The fax number is 202.354-5232.

The email address is Vanguarddocketing@kelly-ip.com

David M. Kelly 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: DAVID M. KELLY. DAVID M. KELLY of KELLY IP LLP, is located at

      1300 19TH STREET, NW, SUITE 300
      SUITE 300
      WASHINGTON, District of Columbia 20036
      US
The docket/reference number is 235.0178.

The phone number is 202-808-3570.

The fax number is 202.354-5232.

The email address is Vanguarddocketing@kelly-ip.com; david.kelly@kelly-ip.com; kelly.kurtz@kelly-ip.com

The applicants proposed correspondence information: David M. Kelly. David M. Kelly of KELLY IP LLP, is located at

      1300 19TH STREET, NW, SUITE 300
      WASHINGTON, District of Columbia 20036
      United States
The docket/reference number is 235.0178.

The phone number is 202-808-3570.

The fax number is 202.354-5232.

The email address is Vanguarddocketing@kelly-ip.com; david.kelly@kelly-ip.com; kelly.kurtz@kelly-ip.com

SIGNATURE(S)
Response Signature
Signature: /david m. kelly/     Date: 01/24/2020
Signatory's Name: David M. Kelly
Signatory's Position: Attorney for Applicant, DC Bar member

Signatory's Phone Number: 2028083570

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:    DAVID M. KELLY
   KELLY IP LLP
   1300 19TH STREET, NW, SUITE 300
   SUITE 300
   WASHINGTON, District of Columbia 20036
Mailing Address:    David M. Kelly
   KELLY IP LLP
   1300 19TH STREET, NW, SUITE 300
   WASHINGTON, District of Columbia 20036
        
Serial Number: 88424500
Internet Transmission Date: Fri Jan 24 14:37:24 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200124143724435
299-88424500-700f26dbe3e5a822ead2540358d
39f09fcb57e2a3f8e26a308a1b164c3d752f49-N
/A-N/A-20200124141259143842