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. 90189429 CFTC (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9018942 9/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Development of standards for regulation of the U.S. derivatives markets; providing a website featuring information in the field of the U.S. derivatives markets and related whistleblower and customer protection; providing regulation of the U.S. derivatives markets; providing industry oversight of the U.S. derivatives markets; educational services, namely, providing information in the field of the U.S. derivatives markets and related whistleblower and customer protection; educational services, namely, hosting and attending seminars, trade shows, conferences and meetings concerning the U.S. derivatives markets and related whistleblower and customer protection and distributing course materials in connection therewith; promoting public awareness of the U.S. derivatives markets and related whistleblower and customer protection; development and dissemination of informational, educational and promotional electronic and printed materials concerning the U.S. derivatives markets and related whistleblower and customer protection; informational, educational and promotional electronic and printed materials concerning the U.S. derivatives markets and related whistleblower and customer protection
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 01/13/2020 and first used in commerce at least as early as 01/13/2020 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Development of standards for regulation of the U.S. derivatives markets; providing a website featuring financial information in the field of the U.S. derivatives markets and related whistleblower programs in the field of U.S. derivatives markets and customer protection programs in the field of U.S. derivatives markets; providing a website featuring information in the field of the U.S. derivatives markets and related whistleblower and customer protection; providing regulation of the U.S. derivatives markets; providing industry oversight of the U.S. derivatives markets; educational services, namely, providing information in the field of the U.S. derivatives markets and related whistleblower and customer protection; educational services, namely, hosting and attending seminars, trade shows, conferences and meetings concerning the U.S. derivatives markets and related whistleblower and customer protection and distributing course materials in connection therewith; promoting public awareness of the U.S. derivatives markets and related whistleblower and customer protection; development and dissemination of informational, educational and promotional electronic and printed materials concerning the U.S. derivatives markets and related whistleblower and customer protection; informational, educational and promotional electronic and printed materials concerning the U.S. derivatives markets and related whistleblower and customer protectionClass 036 for providing a website featuring financial information in the field of the U.S. derivatives markets and related whistleblower programs in the field of U.S. derivatives markets and customer protection programs in the field of U.S. derivatives markets
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 01/13/2020 and first used in commerce at least as early as 01/13/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 036. The specimen(s) submitted consists of various websites on which applicant's mark appears and materials referencing applicant's website.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-69821736-20210714185 743456689_._Class_36_Spec imen.pdf
Converted PDF file(s) ( 17 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12Specimen File13Specimen File14Specimen File15Specimen File16Specimen File17
Original PDF file:
SPU0-69821736-20210714185 743456689_._Class_36_Spec imen_2.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-69821736-20210714185 743456689_._CFTC_Class_42 _Specimen.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


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

Applicant hereby adds the following class of goods/services to the application:
New: Class 016 for Printed educational materials in the field of U.S. derivatives markets and related whistleblower and customer protection
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 01/13/2020 and first used in commerce at least as early as 01/13/2020 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 016 . The specimen(s) submitted consists of printed material using applied for mark .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-69821736-20210714185 743456689_._Class_16.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


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

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Conducting trade shows in the field of U.S. derivatives markets and related whistleblower and customer protection; promoting public awareness of the U.S. derivatives markets and related whistleblower and customer protection; dissemination of promotional material in the field of U.S. derivatives markets and related whistleblower and customer protection;
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 01/13/2020 and first used in commerce at least as early as 01/13/2020 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035 . The specimen(s) submitted consists of specimens showing use in connection with services claimed in Class 35 .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN1-69821736-20210714185 743456689_._CFTC_Class_35 _Specimen.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Original PDF file:
SPN1-69821736-20210714185 743456689_._Class_35_Spec imen_1.pdf
Converted PDF file(s) ( 4 pages) Specimen File1Specimen File2Specimen File3Specimen File4
Original PDF file:
SPN1-69821736-20210714185 743456689_._CLass_35_2.pdf
Converted PDF file(s) ( 3 pages) Specimen File1Specimen File2Specimen File3


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

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Educational services, namely, hosting and attending seminars, conferences, and meetings concerning the U.S. derivatives markets and related whistleblower and customer protection and distributing course materials in connection therewith; providing online non-downloadable electronic publications in the nature of brochures, books, in the field of the U.S. derivatives markets and related whistleblower and customer protection; development and dissemination of printed educational materials concerning the U.S. derivatives markets and related whistleblower and customer protection
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 01/13/2020 and first used in commerce at least as early as 01/13/2020 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041 . The specimen(s) submitted consists of downloadable publications .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN2-69821736-20210714185 743456689_._Class_41_Spec imen.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


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

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Development of standards for regulation of the U.S. derivatives markets in the nature of development of quality control standards for the regulation of U.S. derivatives markets for the purpose of industry oversight; providing regulation of the U.S. derivatives markets in the nature of development of rules for the regulation of the U.S. financial commodity futures , swaps, and options markets and related whistleblower and customer protection, for the purpose of industry oversight; providing industry oversight of the U.S. derivatives markets in the nature of supervision of the U.S. financial market activity and financial market participants
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 01/13/2020 and first used in commerce at least as early as 01/13/2020 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].


Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      MATTHEW E. MOERSFELDER
      PRIMARY EMAIL FOR CORRESPONDENCE: seatm@dwt.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mmoersfelder@dwt.com; chrishagemann@dwt.com; emilyeskew@dwt.com

The docket/reference number is 116197-T1.
Correspondence Information (proposed):
      Matthew E. Moersfelder
      PRIMARY EMAIL FOR CORRESPONDENCE: seatm@dwt.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mmoersfelder@dwt.com; chrishagemann@dwt.com; emilyeskew@dwt.com

The docket/reference number is 116197-T1.

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).

FEE(S)
Fee(s) in the amount of $1400 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /MEM/      Date: 07/14/2021
Signatory's Name: Matthew Moersfelder
Signatory's Position: Applicant's Attorney, WA Bar Member
Signatory's Phone Number: 2067578014

Signature method: Signed directly within the form

Response Signature
Signature: /MEM/     Date: 07/14/2021
Signatory's Name: Matthew Moersfelder
Signatory's Position: Applicant's Attorney

Signatory's Phone Number: 2067578014 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:    MATTHEW E. MOERSFELDER
   DAVIS WRIGHT TREMAINE LLP
   
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
Mailing Address:    Matthew E. Moersfelder
   DAVIS WRIGHT TREMAINE LLP
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
        
PAYMENT: 90189429
PAYMENT DATE: 07/14/2021
        
Serial Number: 90189429
Internet Transmission Date: Wed Jul 14 19:15:41 ET 2021
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-202107141915411863
65-90189429-78073d4bd19a3a3bdf88a3e7b6c8
a6c01616f343e90c87b76342d6a1f5f628a6c-DA
-15394052-20210714185743456689