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. 88489404 TOKEN (Stylized and/or with Design, see http://uspto.report/TM/88489404/mark.png) has been amended as follows:

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

RESPONSE

This is in response to the Office Action dated September 23, 2019. Reconsideration of this application is respectfully requested in view of the following remarks.

REMARKS

Applicant’s attorney and the Examiner discussed the Office Action by phone. In this conversation, the Examiner confirmed that the Section 2(d) refusal applied only to Classes 35 and 42 referenced in the application, and not to Class 9.

Moreover, the Office Action stated that a copy of the foreign registration on which the application is based under Section 44(e) of the Lanham Act was not attached to the application. Applicant informed the Examiner that such foreign registration was provided in the Application. Thus, Examiner confirmed that the refusal based on the failure to provide a foreign registration was an error.

Applicant thanks the Examiner for her consideration on both of these issues and the other issues discussed herein.

As noted above, the Office Action preliminarily refused registration of the application in Classes 38 and 42 under Section 2(d) of the Lanham Act in view of four prior registrations:

• U.S. Registration No. 5312631 and 5262750 (“GIFT TOKENS”): “Transmission of greeting cards online; transmission of photo greetings online; electronic transmission of photo greetings and gift cards via computer terminals and electronic devices” in International Class 38;
• U.S. Registration No. 5339714 (“TOKEN.FM”): “Electronic transmission and streaming of digital media content for others via global and local computer networks” in International Class 38;
• U.S. Registration No. 5267415 (“TOKENCASH”): “Telecommunication services, namely, providing electronic message alerts via the internet; Telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of changes to financial databases containing bill payment data for the purpose of allowing users to manage their payments; Communications by computer terminals; Telecommunication services, namely, providing internet access via broadband optical or wireless networks; Telecommunications services for providing multiple-user access to a global computer network; Providing telecommunications connections to the internet or databases; Providing access to telecommunication networks” In International Class 38; and
• U.S. Registration No. 5634141 (“TOKEN FOUNDRY”): “ Technical consulting in the field of computer software, hardware, and engineering for virtual currency and cryptocurrency; Computer programming services in the field of virtual currency, cryptocurrency, and initial coin offerings; consulting services in the field of software design in the field of virtual currency, cryptocurrency, and initial coin offerings; consulting services in the field of design and implementation of computer-based information systems in the field of virtual currency, cryptocurrency, and initial coin offerings” in International Class 42

Applicant has carefully considered the Examiner’s refusal but disagrees that there is any risk of confusion between Applicant’s Mark and the Cited Mark.

A multi-factor test is used by the Patent and Trademark Office to assess whether a likelihood of confusion exists between marks. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). These 13 factors are: (i) similarity of the marks; (ii) similarity and nature of the goods or services; (iii) similarity of established trade channels; (iv) whether purchases are impulse or sophisticated; (v) fame of the prior mark; (vi) amount and nature of similar marks on similar goods; (vii) actual confusion; (viii) length of time of concurrent use without evidence of actual confusion; (ix) variety of goods on which mark is used; (x) market interface between applicant and owner of prior mark; (xi) extent that applicant has a right to exclude others from use of its mark; (xii) extent of potential confusion; and (xiii) and any other probative fact. Id. Not all factors may be relevant in a particular case, In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003) and, in turn, a single factor may outweigh all others. Kellogg Co. v. Pack ’Em Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991).

Applicant submits that the respective marks are not confusingly similar when considered in light of the DuPont factors discussed in detail below:

I. APPLICANT’S MARK DOES NOT CREATE A LIKELIHOOD OF CONFUSION WITH THE CITED MARKS.

A. The Refusals in Class 38 Should Be Withdrawn In Light of the Application’s Amended Services.

Upon Examiner’s request, Applicant has amended the identification of services in Class 38, and the amended services make clear that Applicant’s services are different from, and not related to, the services covered in the cited marks in Class 38.

With respect to the refusal in Classes 38, the Examiner noted that the application’s identification of services uses “broad wording to describe telecommunication [services] . . . which presumably encompasses all services of the type described, including all of registrants’ more narrowly defined telecommunication related services.” In light of the Examiner’s refusal, and in light of Examiner’s request for additional specificity with regard to the identification of services in Class 38, Applicant has revised its specification of services to narrowly describe its service offerings as “telecommunications, namely, providing fiber optic network services, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents.”

Applicant’s amended services clearly exclude the services covered by the prior registrations cited in Class 38 identified by the Examiner, all of which relate to the transmission of data and materials via global networks. Instead, Applicant’s services relate to the provision of fiber optic network services, which are a means and medium for providing access to networks. These services are not related goods (nor are they complementary or replacement goods) and are sold in different channels of trade.

In light of the narrowing amendments, Applicant requests the Examiner withdraw her refusal with regard to the prior references in Class 38.

B. Third-Party TOKEN-Formative Marks Coexist, Suggesting Applicant’s Mark and the Cited Mark May Likewise Coexist.

With regard to the refusal in Class 42, a large number of TOKEN-formative marks peacefully coexist on the register, showing that Applicant’s mark and the cited TOKEN FOUNDRY registration can likewise coexist. Evidence of third-party registrations for the same or similar marks demonstrates that the marks may be able to coexist. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,1373 (Fed. Cir. 2005).

In Class 42, the TOKEN FOUNDRY mark coexists with other third-party TOKEN-formative references in connection with products and services which appear more similar to the cited mark’s services than those covered in Applicant’s mark. For instance, the TOKEN FOUNDRY registration, which covers various consulting services for software in the field of virtual currency and cryptocurrency, coexists with a registration for TOKEN (U.S. Reg. No. 5034154) covering “providing temporary use of on-line non-downloadable software and applications for electronically sending, receiving, storing, accepting and transmitting digital currency, and facilitating digital currency payment and exchange transactions.” A TSDR report of the TOKEN registration (U.S. Reg. No. 5034154) is attached as Exhibit A to this filing.

Moreover, even a cursory search identifies that there are a number of TOKEN-formative marks for similar software-related services in the cryptocurrency and digital currency industry as covered in cited TOKEN FOUNDRY mark, including, without limitation:

• TOKENPAY (U.S. Reg. No. 5735722) covering, inter alia, “providing temporary use of on-line non-downloadable software for users to send and receive electronic tokens; Providing on-line non-downloadable computer software for use as a cryptocurrency wallet;”
• TOKENTAX (U.S. Reg. No. 5606436) covering, inter alia, “providing temporary use of on-line non-downloadable software for tax planning, tax calculation, and tax return form preparation for sales and dispositions of cryptocurrencies and income related to cryptocurrency mining and/or getting paid in cryptocurrency in lieu of fiat currency;”
• IMTOKEN (U.S. Reg. No. 5919200) covering, inter alia, “computer software consultancy. . .; software as a service (SAAS) services featuring software for blockchain technology for exchanging digital currency and executing smart contracts;” and
• TOKENBACON (U.S. Reg. No. 5930024) covering, inter alia, “Virtual currency related services, namely, providing online, non-downloadable software for sending, receiving, storing, managing, accessing and transferring multiple types of virtual currency.”

Status pages from TSDR for each of these references is attached hereto as Exhibit B.

The coexistence of these filings demonstrates that Applicant’s mark can peaceably coexist with the other TOKEN-formative registrations, many of which cover services which are more similar to each other than Applicant’s services are to the cited reference’s services.

At bottom, if TOKEN (U.S. Reg. No. 5034154) and IMTOKEN (U.S. Reg. No. 5919200) can coexist and do not create confusion with the TOKEN FOUNDRY registration, it is highly unlikely that Applicant’s TOKEN (and design) mark will create confusion.

CONCLUSION

In view of the foregoing, and since the Examining Attorney found no other similar registered or pending marks that would bar registration under Section 2(d) of the Trademark Act, Applicant respectfully requests that the application be approved for publication. An early publication date is respectfully requested.

EVIDENCE
Evidence in the nature of Third-party TOKEN-formative registrations in Class 42 has been attached.
Original PDF file:
evi_6517538-20200311160746008328_._Response_to_OFAC_for_TOKEN_and_design.pdf
Converted PDF file(s) ( 16 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
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Evidence-15
Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Computer software and computer applications, smartphones and tablet computers; downloadable applications for computers, smartphones and tablet computers, none of the above goods being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013418711 registered 06/01/2016 with a renewal date of __________ and an expiration date of __________ ], 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 and computer applications, smartphones and tablet computers; Downloadable computer software for smartphones and tablet computers, namely, software for word processing and for use as a of spreadsheets for smartphones and tablet computers; downloadable applications for computers, smartphones and tablet computers, none of the above goods being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents; downloadable computer software applications for smartphones and tablet computers, namely, software for word processing and for use of spreadsheets; downloadable computer software applications for computers, smartphones and tablet computers, namely, software for use in electronic storage of data, none of the above goods being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documentsClass 009 for Downloadable computer software for smartphones and tablet computers, namely, software for word processing and for use as a of spreadsheets for smartphones and tablet computers; downloadable computer software applications for smartphones and tablet computers, namely, software for word processing and for use of spreadsheets; downloadable computer software applications for computers, smartphones and tablet computers, namely, software for use in electronic storage of data, none of the above goods being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013418711 registered 06/01/2016 with a renewal date of __________ and an expiration date of __________ ], 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.

Applicant proposes to amend the following:
Current: Class 038 for Telecommunication, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013418711 registered 06/01/2016 with a renewal date of __________ and an expiration date of __________ ], 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: Telecommunication, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents; Telecommunication services, namely providing fiber optic network services, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documentsClass 038 for Telecommunication services, namely providing fiber optic network services, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013418711 registered 06/01/2016 with a renewal date of __________ and an expiration date of __________ ], 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: INGRAM MICRO S.r.I. a(n) having an address of
      Vitale delle Industrie, 14/B
      Settala, Milano, 20090
      Italy

Proposed: INGRAM MICRO S.r.I., sociedad de responsabilidad limitada (srl) legally organized under the laws of Italy, having an address of
      Vitale delle Industrie, 14/B
      Settala, Milano, 20090
      Italy
      Email Address: richard.cruz@dlapiper.com

The owner's/holder's current attorney information: Richard L. Cruz. Richard L. Cruz of DLA PIPER LLP (US), is located at

      1650 MARKET STREET, SUITE 5000
      PHILADELPHIA, Pennsylvania 19103
      United States
The docket/reference number is IME-19-1337.
      The phone number is 215-656-2446.
      The fax number is 215-656-3301.
      The email address is pto.phil@dlapiper.com

The owner's/holder's proposed attorney information: Richard L. Cruz. Other appointed attorneys are Michael Geller, Keith Medansky, Hilary Remijas, Nicole Chaudhari, Eugenia Schontag, Lisa Lint. Richard L. Cruz of DLA PIPER LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1650 MARKET STREET, SUITE 5000
      PHILADELPHIA, Pennsylvania 19103
      United States
The docket/reference number is IME-19-1337.
      The phone number is 215-656-2446.
      The fax number is 215-656-3301.
      The email address is pto.phil@dlapiper.com

Richard L. Cruz 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):
      RICHARD L. CRUZ
      PRIMARY EMAIL FOR CORRESPONDENCE: pto.phil@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is IME-19-1337.
Correspondence Information (proposed):
      Richard L. Cruz
      PRIMARY EMAIL FOR CORRESPONDENCE: pto.phil@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): michael.geller@dlapiper.com; richard.cruz@dlapiper.com

The docket/reference number is IME-19-1337.

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
Description of mark
The mark consists of the wording "TOKEN" with the letter "O" having a circular swirl design with a shaded circle in the center, and the tail of the design curling under the circle in four curved quadrilaterals.

SIGNATURE(S)
Response Signature
Signature: /Michael Geller/     Date: 03/11/2020
Signatory's Name: Michael Geller
Signatory's Position: Associate attorney, DLA Piper LLP, Illinois bar member

Signatory's Phone Number: 312.368.4000

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:    RICHARD L. CRUZ
   DLA PIPER LLP (US)
   
   1650 MARKET STREET, SUITE 5000
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    Richard L. Cruz
   DLA PIPER LLP (US)
   1650 MARKET STREET, SUITE 5000
   PHILADELPHIA, Pennsylvania 19103
        
Serial Number: 88489404
Internet Transmission Date: Wed Mar 11 16:22:06 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2020031116220629246
2-88489404-710af912338fa9fde2bc946ecf195
2cd7d385188f193fc4629b57757a5a43c-N/A-N/
A-20200311160746008328