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. 88441975 GUILD(Standard Characters, see http://uspto.report/TM/88441975/mark.png) has been amended as follows:

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

            Applicant notes that in the August 9, 2019 Office Action, the Examining Attorney mistakenly issued a likelihood of confusion refusal based on Registration No. 1472469.  The attachments to the Office Action show that, instead, Applicant’s Mark should have been issued a prior-filed application notice based on Serial No. 79/261,070 (“Prior-Filed Mark”).  An Office Action issued for the Prior-Filed Mark on July 31, 2019.  A response to the Office Action was therefore due on January 31, 2020.  TSDR does not indicate that a response was filed.

            Applicant therefore respectfully requests that its Application be suspended pending the possible abandonment of the Prior-Filed Mark.  Applicant has addressed the other non-substantive issues in the Office Action.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software in the nature of an application for electronic trading, investment portfolio management, financial analysis, and financial risk modeling software; software game for electronic trading software, investment portfolio management, financial analysis and financial risk modeling
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 software in the nature of an application for electronic trading, investment portfolio management, financial analysis, and financial risk modeling software; Downloadable software in the nature of a mobile or desktop application for electronic trading, investment portfolio management, financial analysis, and financial risk modeling software for consumers; software game for electronic trading software, investment portfolio management, financial analysis and financial risk modeling; downloadable software in the nature of a mobile or desktop game software application for electronic trading, investment portfolio management, financial analysis, and financial risk modelingClass 009 for Downloadable software in the nature of a mobile or desktop application for electronic trading, investment portfolio management, financial analysis, and financial risk modeling software for consumers; downloadable software in the nature of a mobile or desktop game software application for electronic trading, investment portfolio management, financial analysis, and financial risk modeling
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 Providing on-line non-downloadable software for electronic trading software, investment portfolio management, financial analysis and financial risk modeling; providing on-line non-downloadable software game for electronic trading software, investment portfolio management, financial analysis and financial risk modeling
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: Providing on-line non-downloadable software for electronic trading software, investment portfolio management, financial analysis and financial risk modeling; Providing on-line, non-downloadable software for electronic trading, investment portfolio management, financial analysis, and financial risk modeling; providing on-line non-downloadable software game for electronic trading software, investment portfolio management, financial analysis and financial risk modeling; providing on-line, non-downloadable game software for electronic trading software, investment portfolio management, financial analysis, and financial risk modelingClass 042 for Providing on-line, non-downloadable software for electronic trading, investment portfolio management, financial analysis, and financial risk modeling; providing on-line, non-downloadable game software for electronic trading software, investment portfolio management, financial analysis, and financial risk modeling
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: John J. O'Malley. John J. O'Malley of VOLPE AND KOENIG, P.C., is located at

      SUITE 1800
      30 SOUTH 17TH STREET
      PHILADELPHIA, Pennsylvania 19103
      US
The docket/reference number is JFL-TM002.

The phone number is 215-568-6400.

The fax number is 215-568-6499.

The email address is Trademarks@vklaw.com

The applicants proposed attorney information: John J. O'Malley. Other appointed attorneys are Michael S. Snyder. John J. O'Malley of VOLPE AND KOENIG, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 1800
      30 South 17th Street
      Philadelphia, Pennsylvania 19103
      United States
The docket/reference number is JFL-TM002.

The phone number is 215-568-6400.

The fax number is 215-568-6499.

The email address is Trademarks@vklaw.com

John J. O'Malley 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: JOHN J. O'MALLEY. JOHN J. O'MALLEY of VOLPE AND KOENIG, P.C., is located at

      SUITE 1800
      30 SOUTH 17TH STREET
      PHILADELPHIA, Pennsylvania 19103
      US
The docket/reference number is JFL-TM002.

The phone number is 215-568-6400.

The fax number is 215-568-6499.

The email address is Trademarks@vklaw.com; JOMalley@vklaw.com; CBystrycki@vklaw.com

The applicants proposed correspondence information: John J. O'Malley. John J. O'Malley of VOLPE AND KOENIG, P.C., is located at

      Suite 1800
      30 South 17th Street
      Philadelphia, Pennsylvania 19103
      United States
The docket/reference number is JFL-TM002.

The phone number is 215-568-6400.

The fax number is 215-568-6499.

The email address is Trademarks@vklaw.com; JOMalley@vklaw.com; CBystrycki@vklaw.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_389824798-152110664_._JFL-TM002_Declaration___POA_SIGNED__-20190808.PDF
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Francis Bonner
Signatory's Position: CEO

Response Signature
Signature: /John J. O'Malley/     Date: 02/10/2020
Signatory's Name: John J. O'Malley
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 215-568-6400

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:    JOHN J. O'MALLEY
   VOLPE AND KOENIG, P.C.
   SUITE 1800
   30 SOUTH 17TH STREET
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    John J. O'Malley
   VOLPE AND KOENIG, P.C.
   Suite 1800
   30 South 17th Street
   Philadelphia, Pennsylvania 19103
        
Serial Number: 88441975
Internet Transmission Date: Mon Feb 10 16:48:57 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200210164857982
478-88441975-70039c2ce20ef9ea2cc12f41c84
4cb0b550acae87addf6dfd10c045792ab44b3df-
N/A-N/A-20200210164333804785