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. 88441245 INTELLIGENCE SUITE(Standard Characters, see http://uspto.report/TM/88441245/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 042 for Software as a service featuring software that engages in the process of data collection and analysis in order to reduce charge backs and aid the resolution of billing inquiries and disputes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/30/2009 and first used in commerce at least as early as 11/30/2009 , and is now in use in such commerce.

Proposed: Class 042 for Software as a service featuring software that engages in the process of data collection and analysis in order to reduce charge backs and aid the resolution of billing inquiries and disputes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/30/2009 and first used in commerce at least as early as 11/30/2009 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of screen shots from Applicant's website setting forth the services offered in connection with the service mark.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8

Applicant proposes to amend the following:
Current: Class 045 for Fraud detection services in the field of credit cards for on-line purchasing; Fraud detection services in the field of credit cards, debit cards, and payment cards for financial transactions; Fraud detection services in the field of insurance, credit cards, banking and retail/financial transactions; Providing fraud detection services for electronic funds transfer, credit and debit card and electronic check transactions via a global computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/30/2009 and first used in commerce at least as early as 11/30/2009 , and is now in use in such commerce.

Proposed: Class 045 for Fraud detection services in the field of credit cards for on-line purchasing; Fraud detection services in the field of credit cards, debit cards, and payment cards for financial transactions; Fraud detection services in the field of insurance, credit cards, banking and retail/financial transactions; Providing fraud detection services for electronic funds transfer, credit and debit card and electronic check transactions via a global computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/30/2009 and first used in commerce at least as early as 11/30/2009 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 045. The specimen(s) submitted consists of screen shots from Applicant's website setting forth the services offered in connection with the service mark.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Verifi, Inc., a corporation of California, having an address of
      8391 Beverly Blvd., Suite 310
      Los Angeles, California 90048
      United States
      Email Address: XXXX
      212-974-7474
      212-974-8474
Proposed: Verifi, Inc., a corporation of California, having an address of
      8391 Beverly Blvd., Suite 310
      Los Angeles, California 90048
      United States
      Email Address: XXXX
      310-312-2000
      
Correspondence Information (current):
      Eleanor M. Lackman
      PRIMARY EMAIL FOR CORRESPONDENCE: Trademark@msk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 49920-00002.
Correspondence Information (proposed):
      Eleanor M. Lackman
      PRIMARY EMAIL FOR CORRESPONDENCE: Trademark@msk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 49920-00002.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Eleanor M. Lackman/      Date: 03/27/2020
Signatory's Name: Eleanor M. Lackman/
Signatory's Position: Attorney of Record, California and New York bar member
Signatory's Phone Number: 310-312-2000


Response Signature
Signature: /Eleanor M. Lackman/     Date: 03/27/2020
Signatory's Name: Eleanor M. Lackman
Signatory's Position: Attorney of Record, California and New York bar member

Signatory's Phone Number: 310-312-2000

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:    Eleanor M. Lackman
   Mitchell Silberberg & Knupp, LLP
   18th Floor
   2049 Century Park East
   Los Angeles, California 90067
Mailing Address:    Eleanor M. Lackman
   Mitchell Silberberg & Knupp, LLP
   18th Floor
   2049 Century Park East
   Los Angeles, California 90067
        
Serial Number: 88441245
Internet Transmission Date: Fri Mar 27 15:32:06 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-202003271532061262
53-88441245-710fb85966d85b164756ec1a4c9c
7e2cd603b9c62eb61a5f4cb155a403cad20f8-N/
A-N/A-20200327151703038814