Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90042859 CONTOUR(Standard Characters, see http://uspto.report/TM/90042859/mark.png) has been amended as follows:

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

The Examining Attorney's office action included a Section 2(d) rejection. Due to the numerous changes made in this response to Applicant's descriptions of goods and services (making them much more specific), Applicant believes the Section 2(d) rejection is now moot. Applicant respectfully requests that the Section 2(d) rejection be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Software; software for use in distributed ledger platform technology; distributed ledger platform software; software for use in databases, record and ledger systems; software for facilitating transactions via telecommunications systems, data communication systems or global networks; software for use in processing financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; software for use in e-commerce or on-line marketplaces to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; software for database management
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000345696 filed 01/10/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Software; Downloadable software for digital trade; software for use in distributed ledger platform technology; downloadable software for corporate transaction banking; downloadable software for trade finance; software for use in databases, record and ledger systems; downloadable software for telecommunications; software for facilitating transactions via telecommunications systems, data communication systems or global networks; downloadable software for use in distributed ledger platform technology, namely, for corporate transaction banking, trade, trade finance, telecommunications; software for use in processing financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; distributed ledger platform software; software for use in e-commerce or on-line marketplaces to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; downloadable software for use in databases, record and ledger systems, namely, for corporate transaction banking, trade, trade finance, telecommunications; software for database management; downloadable software for facilitating transactions via telecommunications systems, data communication systems or global networks; downloadable software for use in processing financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; downloadable software for use in e-commerce or on-line networks to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; downloadable software for database managementClass 009 for Downloadable software for digital trade; downloadable software for corporate transaction banking; downloadable software for trade finance; downloadable software for telecommunications; downloadable software for use in distributed ledger platform technology, namely, for corporate transaction banking, trade, trade finance, telecommunications; distributed ledger platform software; downloadable software for use in databases, record and ledger systems, namely, for corporate transaction banking, trade, trade finance, telecommunications; downloadable software for facilitating transactions via telecommunications systems, data communication systems or global networks; downloadable software for use in processing financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; downloadable software for use in e-commerce or on-line networks to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; downloadable software for database management
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Singapore application number 40202014126U filed 07/08/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 035 for Operating on-line marketplaces for the provision and facilitation of financial services; the provision of on-line marketplaces for the provision and facilitation of collateral transfers and enhanced liquidity; providing business and financial information via a web site; administrative processing of transactions; updating and maintenance of data in computer databases and information registries
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000345696 filed 01/10/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Operating on-line marketplaces for the provision and facilitation of financial services; Operating on-line networks for the facilitation of financial services; the provision of on-line marketplaces for the provision and facilitation of collateral transfers and enhanced liquidity; operating on-line networks for the provision of financial services; providing business and financial information via a web site; operating on-line networks for the buying and selling of financial services; administrative processing of transactions; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; updating and maintenance of data in computer databases and information registries; providing business information via a web site; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a digital platform; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a distributed ledger technology software; updating and maintenance of data in computer databases and information registries in the nature of computer databases; financial records management, namely, issuing, recording, verification and managing records of financial, banking and monetary service instruments and documents; financial records management, namely, issuing, recording, verification and managing records of trade finance; financial records management, namely, issuing, recording, verification and managing records of loans; financial records management, namely, issuing, recording, verification and managing records of bank guarantees; financial records management, namely, issuing, recording, verification and managing records of credit guaranteesClass 035 for Operating on-line networks for the facilitation of financial services; operating on-line networks for the provision of financial services; operating on-line networks for the buying and selling of financial services; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a web site; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a digital platform; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a distributed ledger technology software; updating and maintenance of data in computer databases and information registries in the nature of computer databases; financial records management, namely, issuing, recording, verification and managing records of financial, banking and monetary service instruments and documents; financial records management, namely, issuing, recording, verification and managing records of trade finance; financial records management, namely, issuing, recording, verification and managing records of loans; financial records management, namely, issuing, recording, verification and managing records of bank guarantees; financial records management, namely, issuing, recording, verification and managing records of credit guarantees
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Singapore application number 40202014126U filed 07/08/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 036 for Financial, banking and monetary services; issuing, recording, verification and managing records of financial, banking and monetary service instruments and documents; issuing, recording, verification and managing records of trade finance; issuing, recording, verification and managing records of loans; issuing, recording, verification and managing records of bank guarantees; issuing, recording, verification and managing records of credit guarantees; provision of cryptocurrencies, tokens, monetary equivalents or other non-fiat currencies or values; provision of cryptocurrencies, tokens, monetary equivalents or other non-fiat currencies or values; management of wallets and accounts of cryptocurrencies, tokens, monetary equivalents or other non-fiat currencies or values
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000345696 filed 01/10/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Financial, banking and monetary services; Financial, banking, monetary services, namely, corporate transaction banking, trade, trade finance; issuing, recording, verification and managing records of financial, banking and monetary service instruments and documents; providing online services for financial, banking, and monetary services, namely, corporate transaction banking, trade, trade finance; issuing, recording, verification and managing records of trade finance; providing financial information via a web site; issuing, recording, verification and managing records of loans; financial administrative processing of transactions, namely, corporate transaction banking, trade, trade finance; issuing, recording, verification and managing records of bank guarantees; issuing, recording, verification and managing records of credit guarantees; provision of cryptocurrencies, tokens, monetary equivalents or other non-fiat currencies or values; provision of cryptocurrencies, tokens, monetary equivalents or other non-fiat currencies or values; management of wallets and accounts of cryptocurrencies, tokens, monetary equivalents or other non-fiat currencies or valuesClass 036 for Financial, banking, monetary services, namely, corporate transaction banking, trade, trade finance; providing online services for financial, banking, and monetary services, namely, corporate transaction banking, trade, trade finance; providing financial information via a web site; financial administrative processing of transactions, namely, corporate transaction banking, trade, trade finance
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Singapore application number 40202014126U filed 07/08/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 038 for Peer-to-peer network computer services; providing access to databases; provision of access to global network systems; communications by computer terminals, cellular terminals and equipment and telephones; data streaming services; transmission of digital files, electronic mail and electronic communications; providing online forums and electronic communications channels; providing online services for financial, banking and monetary 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.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000345696 filed 01/10/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Peer-to-peer network computer services; Peer-to-peer network computer services, namely, electronic transmission of information, data and documents among computers; providing access to databases; provision of access to global network systems; provision of access to global computer network systems; communications by computer terminals, cellular terminals and equipment and telephones; communications by computer terminals, cellular terminals, cellular terminal equipment, and telephones; data streaming services; transmission of digital files, electronic mail and electronic communications; transmission of digital files, electronic mail and electronic communications data; providing online forums and electronic communications channels; providing online forums for trade, communications around trade; providing online services for financial, banking and monetary services; providing electronic communications channels, namely, communication by electronic computer terminals, transmission of information by electronic communications networks; providing online services for financial, banking and monetary services, namely, corporate transaction banking, trade, trade finance; providing online services for financial, banking and monetary services, namely, communications in corporate transaction banking, trade, trade finance; providing online services for financial, banking and monetary services, namely, exchanges of information and documents in corporate transaction banking, trade, trade financeClass 038 for Peer-to-peer network computer services, namely, electronic transmission of information, data and documents among computers; providing access to databases; provision of access to global computer network systems; communications by computer terminals, cellular terminals, cellular terminal equipment, and telephones; data streaming services; transmission of digital files, electronic mail and electronic communications data; providing online forums for trade, communications around trade; providing electronic communications channels, namely, communication by electronic computer terminals, transmission of information by electronic communications networks; providing online services for financial, banking and monetary services, namely, corporate transaction banking, trade, trade finance; providing online services for financial, banking and monetary services, namely, communications in corporate transaction banking, trade, trade finance; providing online services for financial, banking and monetary services, namely, exchanges of information and documents in corporate transaction banking, trade, trade finance
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Singapore application number 40202014126U filed 07/08/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 041 for Education; provision of training
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000345696 filed 01/10/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Education; Education services, namely, providing classes, seminars, training sessions in the field of digital trade, digital corporate transaction banking, digital trade finance; provision of training; provision of training in the field of distributed ledger technology platforms; provision of training in the field of blockchain; provision of training the field of cloud softwareClass 041 for Education services, namely, providing classes, seminars, training sessions in the field of digital trade, digital corporate transaction banking, digital trade finance; provision of training in the field of distributed ledger technology platforms; provision of training in the field of blockchain; provision of training the field of cloud software
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Singapore application number 40202014126U filed 07/08/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 042 for Software as a Service, featuring software for providing an electronic or online platform that facilitates development and usage of distributed ledger software applications or database software applications; Platform as a Service, including providing an on-line community for users to develop and share applications built on a distributed ledger software platforms or database software platforms; Hosting Services, including providing a web hosting platform for users to develop and share software applications, database applications and distributed ledger applications; Applications as a Service, featuring application programming interface software to facilitate development and sharing of software applications, database applications and distributed ledger applications; computer programming; computer security; computer system analysis; consultancy services in the field of computer services and computer programming; digitalisation of documents; data encryption services; electronic data storage; electronic monitoring of data; development of computer platforms; consultancy services in the field of software and hardware systems; consultancy services in the field of computer platforms, networks and computer security; consultancy services in the field of distributed ledger platforms and 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[ United Kingdom application number UK0000345696 filed 01/10/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Software as a Service, featuring software for providing an electronic or online platform that facilitates development and usage of distributed ledger software applications or database software applications; Software as a service featuring software for providing an electronic or online platform that facilitates development and usage of distributed ledger software applications or database software applications; Platform as a Service, including providing an on-line community for users to develop and share applications built on a distributed ledger software platforms or database software platforms; platform as a service featuring computer software platforms for providing an on-line environment for use of applications developed on a distributed ledger software platforms or database software platforms; Hosting Services, including providing a web hosting platform for users to develop and share software applications, database applications and distributed ledger applications; applications as a service, namely, providing online downloadable computer application programming interface software to facilitate development and sharing of software applications, database applications and distributed ledger applications; Applications as a Service, featuring application programming interface software to facilitate development and sharing of software applications, database applications and distributed ledger applications; computer programming; computer security, namely, secure platform for exchange of information using distributed ledger technology; computer security; computer system analysis; consultancy services in the field of computer services and computer programming; digitalisation of documents; data encryption services; electronic data storage; development of computer software platforms; electronic monitoring of data; consultancy services in the field of computer software; development of computer platforms; consultancy services in the field of design, selection, implementation and use of computer hardware systems for others; consultancy services in the field of software and hardware systems; consultancy services in the field of computer software platforms and computer security; consultancy services in the field of computer platforms, networks and computer security; consultancy services in the field of networks, namely, consulting in the field of distributed ledger technology platforms and networks; consultancy services in the field of distributed ledger platforms and technology; consultancy services in the field of distributed ledger software platforms and distributed ledger software technology; providing online downloadable software for financial services, namely corporate transaction banking, trade, trade finance; providing online downloadable software for use in distributed ledger platform technology, namely, for corporate transaction banking, trade, trade finance; providing online downloadable distributed ledger platform software; providing online downloadable software for use in databases, record and ledger systems, namely, for exchange of information in financial services, for communications in financial services; providing online downloadable software for facilitating transactions via telecommunications systems, data communication systems or global networks; providing online downloadable software for use in processing financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; providing online downloadable software for use in e-commerce or on-line networks to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; providing online downloadable software for database managementClass 042 for Software as a service featuring software for providing an electronic or online platform that facilitates development and usage of distributed ledger software applications or database software applications; platform as a service featuring computer software platforms for providing an on-line environment for use of applications developed on a distributed ledger software platforms or database software platforms; applications as a service, namely, providing online downloadable computer application programming interface software to facilitate development and sharing of software applications, database applications and distributed ledger applications; computer programming; computer security, namely, secure platform for exchange of information using distributed ledger technology; computer system analysis; consultancy services in the field of computer services and computer programming; digitalisation of documents; data encryption services; electronic data storage; development of computer software platforms; consultancy services in the field of computer software; consultancy services in the field of design, selection, implementation and use of computer hardware systems for others; consultancy services in the field of computer software platforms and computer security; consultancy services in the field of networks, namely, consulting in the field of distributed ledger technology platforms and networks; consultancy services in the field of distributed ledger software platforms and distributed ledger software technology; providing online downloadable software for financial services, namely corporate transaction banking, trade, trade finance; providing online downloadable software for use in distributed ledger platform technology, namely, for corporate transaction banking, trade, trade finance; providing online downloadable distributed ledger platform software; providing online downloadable software for use in databases, record and ledger systems, namely, for exchange of information in financial services, for communications in financial services; providing online downloadable software for facilitating transactions via telecommunications systems, data communication systems or global networks; providing online downloadable software for use in processing financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; providing online downloadable software for use in e-commerce or on-line networks to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; providing online downloadable software for database management
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Singapore application number 40202014126U filed 07/08/2020]. 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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
CONTOUR appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.

Correspondence Information (current):
      STEVEN T. SHELTON
      PRIMARY EMAIL FOR CORRESPONDENCE: sshelton@shelton-ip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Steven T. Shelton
      PRIMARY EMAIL FOR CORRESPONDENCE: sshelton@shelton-ip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Steven T. Shelton/     Date: 04/29/2021
Signatory's Name: Steven T. Shelton
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 914-278-7788 Signature method: Signed directly within the form

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:    STEVEN T. SHELTON
   SHELTON IP
   
   75 SOUTH BROADWAY, SUITE 400
   WHITE PLAINS, New York 10601-4413
Mailing Address:    Steven T. Shelton
   SHELTON IP
   75 SOUTH BROADWAY, SUITE 400
   WHITE PLAINS, New York 10601-4413
        
Serial Number: 90042859
Internet Transmission Date: Thu Apr 29 22:14:21 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202104292214210
80223-90042859-780cff7889e71e2ba03313212
eec1695bff9781823394afe8c57bbddebcece2-N
/A-N/A-20210429214841481872