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. 88429077 MAKE IT COUNT(Standard Characters, see http://uspto.report/TM/88429077/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Applicant Inspired Member, Inc. ("Applicant") by its undersigned counsel, hereby responds to the Office Action dated August 2, 2019, which issued in connection with U.S. Application Serial Number 88/429,077 (the "Application") for the mark MAKE IT COUNT. In the Office Action, the Examining Attorney refused registration only in connection with the goods in Class 25 based on Section 2(d) of the Trademark Act. Applicant hereby respectfully requests that the Application be amended to delete the refused goods in Class 25. In light of this amendment, Applicant respectfully requests the withdrawal of the refusal of record, and that the Application proceed to publication. has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable mobile application software to allow users to process charitable contributions via a global computer network; downloadable computer software that allows users promote, manage, and track fundraising and crowd funding and to raise money and process credit card and other payment transactions online to support charitable petitions, campaigns, and organizations; mobile banking application software; mobile investment application software
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 mobile application software to allow users to process charitable contributions via a global computer network; downloadable computer software that allows users promote, manage, and track fundraising and crowd funding and to raise money and process credit card and other payment transactions online to support charitable petitions, campaigns, and organizations; mobile banking application software; downloadable mobile banking application software for managing bank accounts; mobile investment application software; downloadable mobile investment application software for managing investment accounts; cryptocurrency hardware walletsClass 009 for Downloadable mobile application software to allow users to process charitable contributions via a global computer network; downloadable computer software that allows users promote, manage, and track fundraising and crowd funding and to raise money and process credit card and other payment transactions online to support charitable petitions, campaigns, and organizations; downloadable mobile banking application software for managing bank accounts; downloadable mobile investment application software for managing investment accounts; cryptocurrency hardware wallets
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 035 for Advertising; marketing; public relations service; promoting the charitable giving of others, namely, providing a website, promotional material and public relations services to raise public awareness for philanthropists, charities and charitable giving
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: Advertising; Advertising services; marketing; marketing services; public relations service; public relations services; promoting the charitable giving of others, namely, providing a website, promotional material and public relations services to raise public awareness for philanthropists, charities and charitable giving; credit card registration servicesClass 035 for Advertising services; marketing services; public relations services; promoting the charitable giving of others, namely, providing a website, promotional material and public relations services to raise public awareness for philanthropists, charities and charitable giving; credit card registration services
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 Online charitable fundraising services; crowd funding services in the nature of accepting and administering monetary contributions from a group of individuals or organizations; charitable philanthropic services, namely, collecting, administering and distributing charitable monetary contributions; banking services; credit card services; financial services; financial services, namely, electronic transfer, exchange and conversion of cryptocurrency for use by members of an on-line community via a decentralized computer network; cryptocurrency; investment management and brokerage services; online banking services; electronic payment, namely, electronic processing and transmission of ACH, electronic check, electronic payment, invoice, bill, tax, and distribution payment data; insurance services; Prepaid card services in the nature of processing payments made with reloadable and non-reloadable prepaid cards; Electronic debit, credit and prepaid card processing; Electronic transaction card processing; online banking and credit card services accessible by means of a downloadable mobile application
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: Online charitable fundraising services; crowd funding services in the nature of accepting and administering monetary contributions from a group of individuals or organizations; charitable philanthropic services, namely, collecting, administering and distributing charitable monetary contributions; banking services; credit card services; credit card authorization and transaction processing services; financial services; financial information and advisory services; financial services, namely, electronic transfer, exchange and conversion of cryptocurrency for use by members of an on-line community via a decentralized computer network; cryptocurrency; financial consultation in the field of cryptocurrency; investment management and brokerage services; online banking services; electronic payment, namely, electronic processing and transmission of ACH, electronic check, electronic payment, invoice, bill, tax, and distribution payment data; insurance services; insurance information and consultancy services; Prepaid card services in the nature of processing payments made with reloadable and non-reloadable prepaid cards; Electronic debit, credit and prepaid card processing; Electronic debit, credit and prepaid card transaction and payment processing; Electronic transaction card processing; Electronic debit and credit card transaction processing; online banking and credit card services accessible by means of a downloadable mobile application; online banking and credit card authorization and transaction processing services accessible by means of a downloadable mobile applicationClass 036 for Online charitable fundraising services; crowd funding services in the nature of accepting and administering monetary contributions from a group of individuals or organizations; charitable philanthropic services, namely, collecting, administering and distributing charitable monetary contributions; banking services; credit card authorization and transaction processing services; financial information and advisory services; financial services, namely, electronic transfer, exchange and conversion of cryptocurrency for use by members of an on-line community via a decentralized computer network; financial consultation in the field of cryptocurrency; investment management and brokerage services; online banking services; electronic payment, namely, electronic processing and transmission of ACH, electronic check, electronic payment, invoice, bill, tax, and distribution payment data; insurance information and consultancy services; Prepaid card services in the nature of processing payments made with reloadable and non-reloadable prepaid cards; Electronic debit, credit and prepaid card transaction and payment processing; Electronic debit and credit card transaction processing; online banking and credit card authorization and transaction processing services accessible by means of a downloadable mobile application
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 hereby adds the following class of goods/services to the application:
New: Class 042 for Providing temporary use of on-line non-downloadable mobile banking application software for managing bank accounts; providing temporary use of on-line non-downloadable mobile investment application for managing investment accounts
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Jessica L. Rothstein/      Date: 01/31/2020
Signatory's Name: Jessica L. Rothstein
Signatory's Position: Attorney of Record, NY Bar Member

Response Signature
Signature: /Jessica L. Rothstein/     Date: 01/31/2020
Signatory's Name: Jessica L. Rothstein
Signatory's Position: Attorney of Record, NY 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.

        
RAM Sale Number: 88429077
RAM Accounting Date: 01/31/2020
        
Serial Number: 88429077
Internet Transmission Date: Fri Jan 31 19:11:41 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200131191141890
447-88429077-700d1f6da67d68b53b7c747cf5b
82a5ca65f7aa4eb5c523daaafeba16b35076fa-C
C-11405412-20200131190217178894