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. 88466751 VAULT(Standard Characters, see http://uspto.report/TM/88466751/mark.png) has been amended as follows:

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

See attached.

EVIDENCE
Evidence in the nature of Arguments; Exhibits A-E has been attached.
Original PDF file:
evi_3814217352-20200224183701533955_._Arguments__VAULT__and_Exhibits.pdf
Converted PDF file(s) ( 50 pages)
Evidence-1
Evidence-2
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Computer software, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; Downloadable computer software for encryption; none of the aforesaid goods relating to the misconduct reporting of fraud detection
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000335997 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000335997 registered __________ with a renewal date of 12/11/2028 and an expiration date of 12/11/2028 ], 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.

Proposed:
Tracked Text Description: Computer software, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Recorded computer software for use in the fields of banking and financial technology, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; Recorded computer software for use in the fields of banking and financial technology to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; Downloadable computer software for encryption; Recorded computer computer software for use in the fields of banking and financial technology for encryption; none of the aforesaid goods relating to the misconduct reporting of fraud detectionClass 009 for Recorded computer software for use in the fields of banking and financial technology, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Recorded computer software for use in the fields of banking and financial technology to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; Recorded computer computer software for use in the fields of banking and financial technology for encryption; none of the aforesaid goods relating to the misconduct reporting of fraud detection
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000335997 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000335997 registered __________ with a renewal date of 12/11/2028 and an expiration date of 12/11/2028 ], 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:
FRU0-3814217352-183701533_._UK_Registration_Certificate_VAULT.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

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:
Current: Class 035 for Computer database management; computer database management services; computerised accounting; computerised book-keeping; Business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; none of the aforesaid services relating to the misconduct reporting of fraud detection
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000335997 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000335997 registered __________ with a renewal date of 12/11/2028 and an expiration date of 12/11/2028 ], 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.

Proposed: Class 035 for Computer database management; computer database management services; computerised accounting; computerised book-keeping; Business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; none of the aforesaid services relating to the misconduct reporting of fraud detection
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000335997 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000335997 registered __________ with a renewal date of 12/11/2028 and an expiration date of 12/11/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

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:
Current: Class 042 for Software as a service (SaaS) services featuring software for providing access to applications and services, namely, providing access to applications and services through a web operating system or portal interface; Computer services, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software as a service (SAAS) services featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, and accounting, and tax planning; and accounting, tax payment filing, business process management, and inventory management, estimating, job costing, employee time tracking, business operations management and project management; Software as a service (SAAS) services featuring software for administering employee payroll; Software as a service (SAAS) services featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services featuring software for business operation, business administration and office functions of a bank; Providing temporary use of non-downloadable cloud-based software for calculating balance sheets, P and L statements and regulatory reports; Computer systems integration services; none of the aforesaid services relating to the misconduct reporting of fraud detection
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000335997 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000335997 registered __________ with a renewal date of 12/11/2028 and an expiration date of 12/11/2028 ], 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.

Proposed:
Tracked Text Description: Software as a service (SaaS) services featuring software for providing access to applications and services, namely, providing access to applications and services through a web operating system or portal interface; Software as a service (SaaS) services for use in the fields of banking and financial technology featuring software for providing access to applications and services, namely, providing access to banking and financial applications and services through a web operating system or portal interface; Computer services, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Computer services for use in the fields of banking and financial technology, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services for use in the fields of banking and financial technology featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software as a service (SAAS) services featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, and accounting, and tax planning; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, tax planning, tax payment filing, inventory management, providing job cost estimates, employee time tracking, business operations management, and project management; and accounting, tax payment filing, business process management, and inventory management, estimating, job costing, employee time tracking, business operations management and project management; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for administering employee payroll; Software as a service (SAAS) services featuring software for administering employee payroll; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for managing bank accounts, loans, savings, mortgages and credit cards in the fields of banking and finance; Software as a service (SAAS) services featuring software for business operation, business administration and office functions of a bank; Providing temporary use of non-downloadable cloud-based software for use in the fields of banking and financial technology for calculating balance sheets, P and L statements and regulatory reports; Providing temporary use of non-downloadable cloud-based software for calculating balance sheets, P and L statements and regulatory reports; Computer systems integration services for use in the fields of banking and financial technology; Computer systems integration services; none of the aforesaid services relating to the misconduct reporting of fraud detectionClass 042 for Software as a service (SaaS) services for use in the fields of banking and financial technology featuring software for providing access to applications and services, namely, providing access to banking and financial applications and services through a web operating system or portal interface; Computer services for use in the fields of banking and financial technology, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services for use in the fields of banking and financial technology featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, tax planning, tax payment filing, inventory management, providing job cost estimates, employee time tracking, business operations management, and project management; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for administering employee payroll; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for managing bank accounts, loans, savings, mortgages and credit cards in the fields of banking and finance; Providing temporary use of non-downloadable cloud-based software for use in the fields of banking and financial technology for calculating balance sheets, P and L statements and regulatory reports; Computer systems integration services for use in the fields of banking and financial technology; none of the aforesaid services relating to the misconduct reporting of fraud detection
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000335997 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000335997 registered __________ with a renewal date of 12/11/2028 and an expiration date of 12/11/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Thought Machine Group Limited a(n) limited company (ltd.), legally organized under the laws of United Kingdom, having an address of
      5 New Street Square
      London, EC4A3TW
      United Kingdom

Proposed: Thought Machine Group Limited, limited company (ltd.) legally organized under the laws of United Kingdom, having an address of
      5 New Street Square
      London, EC4A3TW
      United Kingdom
      Email Address: XXXX

The owner's/holder's current attorney information: Danielle I. Mattessich. Danielle I. Mattessich of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 13367.235US0.
      The phone number is 612-332-5300.
      The fax number is 612-332-9081.
      The email address is dockmpls@merchantgould.com

The owner's/holder's proposed attorney information: Danielle I. Mattessich. Other appointed attorneys are Lindsay Jones, John Clifford, Christopher Schulte, Andrew Ehard, Heather Kliebenstein, Christopher Stanton, Scott Johnston, Danielle I. Mattessich, Brian Batzli, Gregory Golla, Brent Routman, William Schultz, and others. Danielle I. Mattessich of MERCHANT & GOULD 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

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 13367.235US0.
      The phone number is 612-332-5300.
      The fax number is 612-332-9081.
      The email address is dockmpls@merchantgould.com

Danielle I. Mattessich 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.Correspondence Information (current):
      DANIELLE I. MATTESSICH
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 13367.235US0.
Correspondence Information (proposed):
      Danielle I. Mattessich
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dmattessich@merchantgould.com

The docket/reference number is 13367.235US0.

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)
Response Signature
Signature: /daniellemattessich/     Date: 02/24/2020
Signatory's Name: Danielle Mattessich
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 612.332.5300

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:    DANIELLE I. MATTESSICH
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Danielle I. Mattessich
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402
        
Serial Number: 88466751
Internet Transmission Date: Mon Feb 24 18:43:49 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020022418434917
1710-88466751-710d4832412cb7b3eb039120aa
f17288a41ba128fd9c2becdb44da381bbf-N/A-N
/A-20200224183701533955