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. 90053726 CODE(Standard Characters, see http://uspto.report/TM/90053726/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: remarks
Original PDF file:
evi_63239950-202105031312 18492311_._Remarks_GOW214 11_5-3-21.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Financial services, namely, a virtual currency capable of being transferred between users via a blockchain operating on a global peer-to-peer network
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[ Canada application number 2006278 filed 01/15/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Financial services, namely, a virtual currency capable of being transferred between users via a blockchain operating on a global peer-to-peer network; Financial services, namely, providing a virtual currency for use by members of an on-line community capable of being transferred between users via a blockchain operating on a global peer-to-peer networkClass 036 for Financial services, namely, providing a virtual currency for use by members of an on-line community capable of being transferred between users via a blockchain operating on a global peer-to-peer network
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 [ Canada application number 2006278 filed 01/15/2020]. 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 Design and development of computer software for peer-to-peer networks using blockchain technology; developing and updating of computer software for use in managing crypto-currency and block chain data; application service provider featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; acting as an application service provider in the field of information management to host computer application software for the purpose of developing, testing, and integrating blockchain applications and 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.

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[ Canada application number 2006278 filed 01/15/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Design and development of computer software for peer-to-peer networks using blockchain technology; Developing and updating of computer software for use in managing crypto-currency and block chain data; Application service provider featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; acting as an application service provider in the field of information management to host computer application software for the purpose of developing, testing, and integrating blockchain applications and software; Computer services, namely, acting as an application service provider in the field of information management to host computer application software for the purpose of developing, testing, and integrating blockchain applications and softwareClass 042 for Design and development of computer software for peer-to-peer networks using blockchain technology; Developing and updating of computer software for use in managing crypto-currency and block chain data; Application service provider featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; Computer services, namely, acting as an application service provider in the field of information management to host computer application software for the purpose of developing, testing, and integrating blockchain applications and 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 [ Canada application number 2006278 filed 01/15/2020]. 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
Miscellaneous Statement
A change of representation form which revoked the power of attorney of Brendan J. Hughes and appointed Michael J. Andri as the attorney of record was filed on April 30, 2021. As the records have not yet been updated and the deadline to file an Office action response is today, May 3, 2021, Applicant submits the attached copy of the filing in order to avoid any issues with this filing. Michael J. Andri's bar information has been redacted for the purposes of avoiding the information being publicly visible but has included it under the attorney page of this Office action response. The attorneys information is shown below: Name: Michael J. Andri U.S. State: Oregon Firm Name: Alleman Hall Creasman & Tuttle LLP Other appointed attorneys: Mark D. Alleman, M. Matthews Hall, Charles F. Moore, Christopher S. Tuttle, Jason C. Creasman, Lisa Tom Internal Address: Suite 2300 Street: 900 SW 5th Ave. City: Portland State: Oregon Country: United States Zip code: 97204 Phone Number: 503-595-7300 Fax: 503-595-7301 Email: TrademarkDocket@allemanhall.com Docket Reference: GOW21411

Original PDF file:
mis-63239950-202105031312 18492311_._Change_of_Repr esentative_GOW21411__as_f iled__4-30-21.pdf
Converted PDF file(s) ( 6 pages) Miscellaneous File1Miscellaneous File2Miscellaneous File3Miscellaneous File4Miscellaneous File5Miscellaneous File6

The owner's/holder's current attorney information: Brendan J. Hughes. Brendan J. Hughes of COOLEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1299 PENNSYLVANIA AVE., N.W., SUITE 700
      WASHINGTON, District of Columbia 20004
      United States
      The phone number is 202-842-7800.
      The fax number is 202-842-7899.
      The email address is trademarks@cooley.com

The owner's/holder's proposed attorney information: Brendan J. Hughes. Other appointed attorneys are Mark D. Alleman, M. Matthews Hall, Charles F. Moore, Christopher S. Tuttle, Jason C. Creasman, Lisa Tom. Brendan J. Hughes of Alleman Hall Creasman & Tuttle LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 2300
      900 SW 5th Ave.
      Portland, Oregon 97204
      United States
The docket/reference number is GOW21411.
      The phone number is 503-595-7300.
      The fax number is 503-595-7301.
      The email address is TrademarkDocket@allemanhall.com

Brendan J. Hughes 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):
      BRENDAN J. HUGHES
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): aanderson@cooley.com
Correspondence Information (proposed):
      Brendan J. Hughes
      PRIMARY EMAIL FOR CORRESPONDENCE: TrademarkDocket@allemanhall.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Trademarks@allemanhall.com

The docket/reference number is GOW21411.

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: /Michael J. Andri/     Date: 05/03/2021
Signatory's Name: Michael J. Andri
Signatory's Position: Attorney of record, Oregon bar member

Signatory's Phone Number: 503-595-7307 Signature method: Sent to third party for signature

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:    BRENDAN J. HUGHES
   COOLEY LLP
   
   1299 PENNSYLVANIA AVE., N.W., SUITE 700
   WASHINGTON, District of Columbia 20004
Mailing Address:    Brendan J. Hughes
   Alleman Hall Creasman & Tuttle LLP
   Suite 2300
   900 SW 5th Ave.
   Portland, Oregon 97204
        
Serial Number: 90053726
Internet Transmission Date: Mon May 03 18:10:34 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-202105031810346304
45-90053726-780a0214c2d37e18296af659d7c0
6186cf92f4aa4f3dec37aade9e462e37ec4-N/A-
N/A-20210503171137830405