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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88468515 |
LAW OFFICE ASSIGNED |
LAW OFFICE 111 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88468515/mark.png |
LITERAL ELEMENT |
BBVA |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
The color(s) blue is/are claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the stylized letters "BBVA" in blue. |
OWNER SECTION (current) |
NAME |
BANCO BILBAO VIZCAYA ARGENTARIA, S.A. |
STREET |
Plaza San Nicolás, 4 |
CITY |
BILBAO (VIZCAYA) |
ZIP/POSTAL CODE |
48005 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Spain |
OWNER SECTION (proposed) |
NAME |
BANCO BILBAO VIZCAYA ARGENTARIA, S.A. |
STREET |
Plaza San Nicolás, 4 |
CITY |
BILBAO (VIZCAYA) |
ZIP/POSTAL CODE |
48005 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Spain |
EMAIL |
tm@gbpatent.com |
GOODS AND/OR SERVICES SECTION (035) (current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Advertising; Business management; Business administration; Office functions; Advertising and promotional services related to sports
sponsorships; Advertising related to market research and data analysis in market research; Business management consulting in the field of information technology |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080873 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/11/2019 |
GOODS AND/OR SERVICES SECTION (035) (proposed) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Advertising; Business management; Business administration; Office functions; Advertising and promotional services related to sports
sponsorships; Advertising related to market research and data analysis in market research; Business management consulting in the field of information technology |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018080873 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/11/2019 |
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. |
DELETED FILING BASIS |
1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
018080873 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
10/26/2019 |
FOREIGN EXPIRATION DATE |
06/11/2029 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-208251192218-105351714_._EUIPO_Certificate_of_Registration__04231508_.pdf |
CONVERTED PDF FILE(S)
(5 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0002.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0003.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0004.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0005.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0006.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (038) (current) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Telecommunication services; Access to content, portals and websites; Providing access to web pages |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080873 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/11/2019 |
GOODS AND/OR SERVICES SECTION (038) (proposed) |
INTERNATIONAL CLASS |
038 |
TRACKED TEXT DESCRIPTION |
Telecommunication services; Telecommunications services, namely,
electronic transmission for others of financial information via computer linking services, namely, communicating and routing account balance and status information to others via a global computer
network; Access to content, portals and websites; providing e-mail notification alerts via the internet of changes that
affect financial portfolios; Providing access to web pages; providing electronic transmission of credit card transaction
data and electronic payment data via a global computer network; providing wire transfer services, information and verification regarding such wire
transfers. |
FINAL DESCRIPTION |
Telecommunications services, namely, electronic transmission for others of financial information via computer linking services, namely,
communicating and routing account balance and status information to others via a global computer network; providing e-mail notification alerts via the internet of changes that affect financial
portfolios; providing electronic transmission of credit card transaction data and electronic payment data via a global computer network; providing wire transfer services, information and verification
regarding such wire transfers. |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018080873 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/11/2019 |
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. |
DELETED FILING BASIS |
1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
018080873 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
10/26/2019 |
FOREIGN EXPIRATION DATE |
06/11/2029 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU1-208251192218-095754410_._EUIPO_Certificate_of_Registration__04231508_.pdf |
CONVERTED PDF FILE(S)
(5 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0007.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0008.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0009.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0010.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0011.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (042) (current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Scientific and technological services and research and design relating thereto; Industrial analysis and industrial research services;
Design and development of computer hardware and software; Technological advisory services; Expert advice related to technology |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18080873 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/11/2019 |
GOODS AND/OR SERVICES SECTION (042) (proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Scientific and technological services and research and design relating thereto; Scientific and technological services and research and design relating thereto in the fields of finance, banking, and insurance services; Industrial
analysis and industrial research services; Industrial analysis and industrial research services in the fields of finance, banking, and insurance services;
Design and development of computer hardware and software; Technological advisory services; Technological advisory services in the fields of finance, banking, and insurance services; Expert advice related to technology; Expert advice related to technology in the fields of finance, banking, and insurance services. |
FINAL DESCRIPTION |
Scientific and technological services and research and design relating thereto in the fields of finance, banking, and insurance
services; Industrial analysis and industrial research services in the fields of finance, banking, and insurance services; Design and development of computer hardware and software; Technological
advisory services in the fields of finance, banking, and insurance services; Expert advice related to technology in the fields of finance, banking, and insurance services. |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018080873 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/11/2019 |
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. |
DELETED FILING BASIS |
1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
018080873 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
10/26/2019 |
FOREIGN EXPIRATION DATE |
06/11/2029 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU2-208251192218-095754410_._EUIPO_Certificate_of_Registration__04231508_.pdf |
CONVERTED PDF FILE(S)
(5 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0012.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0013.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0014.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0015.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT18\884\685\88468515\xml1\ROA0016.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
Applicant wishes to rely solely on the foreign registration under Section 44(e). Accordingly, if acceptable, Applicant hereby requests that
the Examining Attorney delete the Section 1(b) basis while maintaining the priority claim under Section 44(d). |
ATTORNEY INFORMATION (current) |
NAME |
Jeffrey H. Handelsman |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
GREENBLUM & BERNSTEIN, P.L.C. |
STREET |
1950 ROLAND CLARKE PLACE |
CITY |
RESTON |
STATE |
Virginia |
POSTAL CODE |
20191-1411 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
703-716-1191 |
FAX |
703-716-1180 |
EMAIL |
eteas@gbpatent.com |
DOCKET/REFERENCE NUMBER |
T58201 |
ATTORNEY INFORMATION (proposed) |
NAME |
Jeffrey H. Handelsman |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
GREENBLUM & BERNSTEIN, P.L.C. |
STREET |
1950 Roland Clarke Place |
CITY |
Reston |
STATE |
Virginia |
POSTAL CODE |
20191-1411 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
703-716-1191 |
FAX |
703-716-1180 |
EMAIL |
eteas@gbpatent.com |
DOCKET/REFERENCE NUMBER |
T58201 |
OTHER APPOINTED ATTORNEY |
Neil F. Greenblum; Bruce H. Bernstein; William S. Boshnick; Jill M. Browning; and the attorneys of Greenblum & Bernstein, P.L.C. |
CORRESPONDENCE INFORMATION (current) |
NAME |
JEFFREY H. HANDELSMAN |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
eteas@gbpatent.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
T58201 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Jeffrey H. Handelsman |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
eteas@gbpatent.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
T58201 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Jeffrey H. Handelsman/ |
SIGNATORY'S NAME |
Jeffrey H. Handelsman |
SIGNATORY'S POSITION |
Attorney for the Applicant, MD Bar {Ref:. T58201} |
SIGNATORY'S PHONE NUMBER |
703-716-1191 |
DATE SIGNED |
03/02/2020 |
RESPONSE SIGNATURE |
/Jeffrey H. Handelsman/ |
SIGNATORY'S NAME |
Jeffrey H. Handelsman |
SIGNATORY'S POSITION |
Attorney for the Applicant, MD Bar (Ref:. T58201) |
SIGNATORY'S PHONE NUMBER |
703-716-1191 |
DATE SIGNED |
03/02/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Mar 02 11:10:46 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20200302111046737863-884
68515-7109ff03e3768faa5d3
649df6d83ab0a943bf91f91c5
f62116eee68388dac97-N/A-N
/A-20200302105351714124 |
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.
88468515 BBVA (Stylized and/or with Design, see http://uspto.report/TM/88468515/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for Advertising; Business management; Business administration; Office functions; Advertising and promotional services related to sports sponsorships; Advertising related to
market research and data analysis in market research; Business management consulting in the field of information technology
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
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[ European Union Trademark - EUTM application number 18080873 filed 06/11/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed: Class 035 for Advertising; Business management; Business administration; Office functions; Advertising and promotional services related to sports sponsorships; Advertising related to
market research and data analysis in market research; Business management consulting in the field of information technology
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number 018080873 filed
06/11/2019]. 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 [ European Union Trademark - EUTM registration number 018080873
registered 10/26/2019 with a renewal date of __________ and an expiration date of 06/11/2029 ], 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:
FRU0-208251192218-105351714_._EUIPO_Certificate_of_Registration__04231508_.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Applicant proposes to amend the following:
Current: Class 038 for Telecommunication services; Access to content, portals and websites; Providing access to web pages
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[ European Union Trademark - EUTM application number 18080873 filed 06/11/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Telecommunication services;
Telecommunications services, namely, electronic transmission for
others of financial information via computer linking services, namely, communicating and routing account balance and status information to others via a global computer network;
Access to content, portals and websites;
providing e-mail notification alerts via the internet of changes that affect financial
portfolios;
Providing access to web pages;
providing electronic transmission of credit card transaction data and
electronic payment data via a global computer network;
providing wire transfer services, information and verification regarding such wire transfers.Class
038 for Telecommunications services, namely, electronic transmission for others of financial information via computer linking services, namely, communicating and routing account balance and status
information to others via a global computer network; providing e-mail notification alerts via the internet of changes that affect financial portfolios; providing electronic transmission of credit
card transaction data and electronic payment data via a global computer network; providing wire transfer services, information and verification regarding such wire transfers.
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number 018080873 filed
06/11/2019]. 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 [ European Union Trademark - EUTM registration number 018080873
registered 10/26/2019 with a renewal date of __________ and an expiration date of 06/11/2029 ], 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:
FRU1-208251192218-095754410_._EUIPO_Certificate_of_Registration__04231508_.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Applicant proposes to amend the following:
Current: Class 042 for Scientific and technological services and research and design relating thereto; Industrial analysis and industrial research services; Design and development of computer
hardware and software; Technological advisory services; Expert advice related to technology
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
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[ European Union Trademark - EUTM application number 18080873 filed 06/11/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Scientific and technological services and research and design relating thereto;
Scientific and
technological services and research and design relating thereto in the fields of finance, banking, and insurance services;
Industrial analysis and industrial
research services;
Industrial analysis and industrial research services in the fields of finance, banking, and insurance services;
Design and development of computer hardware and software;
Technological advisory services;
Technological
advisory services in the fields of finance, banking, and insurance services;
Expert advice related to technology;
Expert
advice related to technology in the fields of finance, banking, and insurance services.Class 042 for Scientific and technological services and research and design relating thereto in the fields
of finance, banking, and insurance services; Industrial analysis and industrial research services in the fields of finance, banking, and insurance services; Design and development of computer
hardware and software; Technological advisory services in the fields of finance, banking, and insurance services; Expert advice related to technology in the fields of finance, banking, and insurance
services.
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number 018080873 filed
06/11/2019]. 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 [ European Union Trademark - EUTM registration number 018080873
registered 10/26/2019 with a renewal date of __________ and an expiration date of 06/11/2029 ], 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:
FRU2-208251192218-095754410_._EUIPO_Certificate_of_Registration__04231508_.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: BANCO BILBAO VIZCAYA ARGENTARIA, S.A. a(n) sociedad anonima (sa), legally organized under the laws of Spain, having an address of
Plaza San Nicolás, 4
BILBAO (VIZCAYA), 48005
Spain
Proposed: BANCO BILBAO VIZCAYA ARGENTARIA, S.A., sociedad anonima (sa) legally organized under the laws of Spain, having an address of
Plaza San Nicolás, 4
BILBAO (VIZCAYA), 48005
Spain
Email Address: tm@gbpatent.com
The owner's/holder's current attorney information: Jeffrey H. Handelsman. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is located at
1950 ROLAND CLARKE PLACE
RESTON, Virginia 20191-1411
United States
The docket/reference number is T58201.
The phone number is 703-716-1191.
The fax number is 703-716-1180.
The email address is eteas@gbpatent.com
The owner's/holder's proposed attorney information: Jeffrey H. Handelsman. Other appointed attorneys are Neil F. Greenblum; Bruce H. Bernstein; William S. Boshnick; Jill M. Browning; and the
attorneys of Greenblum & Bernstein, P.L.C.. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.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
1950 Roland Clarke Place
Reston, Virginia 20191-1411
United States
The docket/reference number is T58201.
The phone number is 703-716-1191.
The fax number is 703-716-1180.
The email address is eteas@gbpatent.com
Jeffrey H. Handelsman 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):
JEFFREY H. HANDELSMAN
PRIMARY EMAIL FOR CORRESPONDENCE: eteas@gbpatent.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
The docket/reference number is T58201.
Correspondence Information (proposed):
Jeffrey H. Handelsman
PRIMARY EMAIL FOR CORRESPONDENCE: eteas@gbpatent.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
The docket/reference number is T58201.
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).
ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant wishes to rely solely on the foreign registration under Section 44(e). Accordingly, if acceptable, Applicant hereby requests that the Examining Attorney delete the Section 1(b) basis while
maintaining the priority claim under Section 44(d).
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: /Jeffrey H. Handelsman/ Date: 03/02/2020
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for the Applicant, MD Bar {Ref:. T58201}
Signatory's Phone Number: 703-716-1191
Response Signature
Signature: /Jeffrey H. Handelsman/ Date: 03/02/2020
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for the Applicant, MD Bar (Ref:. T58201)
Signatory's Phone Number: 703-716-1191
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: JEFFREY H. HANDELSMAN
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, Virginia 20191-1411
Mailing Address: Jeffrey H. Handelsman
GREENBLUM & BERNSTEIN, P.L.C.
1950 Roland Clarke Place
Reston, Virginia 20191-1411
Serial Number: 88468515
Internet Transmission Date: Mon Mar 02 11:10:46 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200302111046
737863-88468515-7109ff03e3768faa5d3649df
6d83ab0a943bf91f91c5f62116eee68388dac97-
N/A-N/A-20200302105351714124