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. 88302127 OMNY (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/88302127/large) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Ser. No. 88302127 - Response to Office Action; Exhibit 1 - Definitions of OMNI has been attached.
Original PDF file:
evi_168149142213-20191104172115569621_._Ser._No._88302127_-_Response_to_Office_Action.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_168149142213-20191104172115569621_._Exhibit_1_-_Definitions_of_OMNI.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for General purpose reloadable prepaid magnetic cards, contact and contactless payment media, and other payment media, for transit fare services; prepaid magnetic cards, contact and contactless payment media, and other payment media, for transit fare services; software for processing electronic payments; multi-functional electronic payment computer terminals and computer kiosks; mobile application software for use in electronic payments and transactions for transit fare services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: General purpose reloadable prepaid magnetic cards, contact and contactless payment media, and other payment media, for transit fare services; General purpose reloadable prepaid magnetic cards, prepaid magnetic contact and contactless cards for transportation fare services; prepaid magnetic cards, contact and contactless payment media, and other payment media, for transit fare services; prepaid magnetic cards, prepaid magnetic contact and contactless cards for transportation fare services; software for processing electronic payments; embedded software for authenticating electronic payments; multi-functional electronic payment computer terminals and computer kiosks; mobile application software for use in electronic payments and transactions for transit fare services; downloadable mobile application software for use in electronic payments and transactions for transportation fare servicesClass 009 for General purpose reloadable prepaid magnetic cards, prepaid magnetic contact and contactless cards for transportation fare services; prepaid magnetic cards, prepaid magnetic contact and contactless cards for transportation fare services; embedded software for authenticating electronic payments; multi-functional electronic payment computer terminals and computer kiosks; downloadable mobile application software for use in electronic payments and transactions for transportation fare services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing, namely, tee-shirts, sweatshirts, tank tops, caps, socks, ties, pants, shorts, skirts, jackets and underwear
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Clothing, namely, tee-shirts, sweatshirts, tank tops, caps, socks, ties, pants, shorts, skirts, jackets and underwear; Clothing, namely, tee-shirts, sweatshirts, tank tops, caps, socks, ties, pants, shorts, skirts, jackets and underwear, all of the foregoing goods to be used solely as a designator of source of or to promote (i) transportation services, (ii) payment processing services and contactless payment systems, and/or (iii) public services, programs and/or initiatives offered or conducted by government entitiesClass 025 for Clothing, namely, tee-shirts, sweatshirts, tank tops, caps, socks, ties, pants, shorts, skirts, jackets and underwear, all of the foregoing goods to be used solely as a designator of source of or to promote (i) transportation services, (ii) payment processing services and contactless payment systems, and/or (iii) public services, programs and/or initiatives offered or conducted by government entities
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for toy trains, buses, boats and passenger vehicles; stuffed animals; decorations for Christmas trees and other festive events
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: toy trains, buses, boats and passenger vehicles; toy trains; stuffed animals; toy vehicles; decorations for Christmas trees and other festive events; toy buses; toy boats and toy passenger vehicles; toy stuffed animals; decorations for Christmas treesClass 028 for toy trains; toy vehicles; toy buses; toy boats and toy passenger vehicles; toy stuffed animals; decorations for Christmas trees
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Payment processing services, namely, processing electronic payments made through prepaid cards and contact and contactless payment media; prepaid card and contact and contactless payment media services; Providing a website featuring reloadable pre-paid and contact and contactless payment media services; Payment processing services in the field of transportation services payments; Processing of contactless credit and debit card payments; Processing of credit card payments via near field communication (NFC) technology-enabled devices; Pre-paid purchase card services, namely, processing electronic payments made through prepaid cards; Pre-paid purchase card and contact and contactless payment media services, namely, processing electronic payments through pre-paid cards and contact and contactless payment media; Providing an internet website portal in the field of financial transaction and payment processing services; Stored value prepaid card and contact and contactless payment media services, namely, processing electronic payments made through prepaid cards and contact and contactless payment media
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Payment processing services, namely, processing electronic payments made through prepaid cards and contact and contactless payment media; prepaid card and contact and contactless payment media services; issuing prepaid debit cards and prepaid magnetic and non-magnetic contact and contactless cards for transit fare payment services; Providing a website featuring reloadable pre-paid and contact and contactless payment media services; Providing a website featuring fare product purchase services, debt recovery services and bill payment services for reloadable pre-paid and contact and contactless payment media services; Payment processing services in the field of transportation services payments; Processing of contactless credit and debit card payments; Processing of credit card payments via near field communication (NFC) technology-enabled devices; Pre-paid purchase card services, namely, processing electronic payments made through prepaid cards; Pre-paid purchase card and contact and contactless payment media services, namely, processing electronic payments through pre-paid cards and contact and contactless payment media; Providing an internet website portal in the field of financial transaction and payment processing services; Stored value prepaid card and contact and contactless payment media services, namely, processing electronic payments made through prepaid cards and contact and contactless payment mediaClass 036 for Payment processing services, namely, processing electronic payments made through prepaid cards and contact and contactless payment media; issuing prepaid debit cards and prepaid magnetic and non-magnetic contact and contactless cards for transit fare payment services; Providing a website featuring fare product purchase services, debt recovery services and bill payment services for reloadable pre-paid and contact and contactless payment media services; Payment processing services in the field of transportation services payments; Processing of contactless credit and debit card payments; Processing of credit card payments via near field communication (NFC) technology-enabled devices; Pre-paid purchase card services, namely, processing electronic payments made through prepaid cards; Pre-paid purchase card and contact and contactless payment media services, namely, processing electronic payments through pre-paid cards and contact and contactless payment media; Providing an internet website portal in the field of financial transaction and payment processing services; Stored value prepaid card and contact and contactless payment media services, namely, processing electronic payments made through prepaid cards and contact and contactless payment media
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 016 for Non-magnetically encoded prepaid and reloadable purchase cards for transportation fare services; Non-magnetically encoded contact and contactless cards for transportation fare services
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Elizabeth Burkhard/     Date: 11/04/2019
Signatory's Name: Elizabeth Burkhard
Signatory's Position: Attorney of record, MA bar member

Signatory's Phone Number: 6175735850

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.

        
RAM Sale Number: 88302127
RAM Accounting Date: 11/04/2019
        
Serial Number: 88302127
Internet Transmission Date: Mon Nov 04 17:27:30 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191104172730
073725-88302127-7006d78c1b23dfd10eaf815b
71e76108e58157f914d5f271f0902ed73b1bcd03
7-CC-27282008-20191104172115569621