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. 90286717 MISSION SQUARE(Standard Characters, see http://uspto.report/TM/90286717/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans concerning insurance and finance, pension plans, retirement funds and deferred compensation plans; providing brokerage on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; providing financial planning information to state and local governments and their employees and to not-for-profit entities and their employees via the Internet; insurance services, including life insurance and life insurance-based securities; financial wellness; and student loan payment planning and administration
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans concerning insurance and finance, pension plans, retirement funds and deferred compensation plans; providing brokerage on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; providing financial planning information to state and local governments and their employees and to not-for-profit entities and their employees via the Internet; insurance services, including life insurance and life insurance-based securities; insurance services, namely, the administration, education, and sale of life insurance and life insurance-based investment products; financial wellness; financial wellness education and counseling in the nature of financial education, financial advice, financial management, and financial consulting; and student loan payment planning and administration; and student loan payment planning and administration.Class 036 for Financial services, namely, commodity investment advice, financial analysis and consultation, financial exchange, financial forecasting, financial investment in mutual funds, stocks and other securities for others, financial management, financial planning, financial portfolio management, fund investment consultation, investment advice, investment brokerage, investment consultation, and investment management for others; financial services in the nature of an investment security; mutual fund investment services; administration of employee benefit plans concerning insurance and finance, pension plans, retirement funds and deferred compensation plans; providing brokerage on behalf of participants in defined contribution plans, deferred compensation plans and individual retirement accounts for investment in mutual funds, stocks and other securities; providing financial information by electronic means about financial accounts, mutual funds, and retirement planning tools; providing financial information by an automated telephone system about financial accounts, mutual funds, and retirement planning tools; providing an online computer database featuring information concerning financial accounts, mutual funds, and retirement planning tools; providing financial planning information to state and local governments and their employees and to not-for-profit entities and their employees via the Internet; insurance services, namely, the administration, education, and sale of life insurance and life insurance-based investment products; financial wellness education and counseling in the nature of financial education, financial advice, financial management, and financial consulting; and student loan payment planning and administration.
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

Correspondence Information (current):
      Edward T. White
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@williamsmullen.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): yflaherty@williamsmullen.com; ewhite@williamsmullen.com; jcho@williamsmullen.com
Correspondence Information (proposed):
      Edward T. White
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@williamsmullen.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): yflaherty@williamsmullen.com; ewhite@williamsmullen.com; jcho@williamsmullen.com

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: /Edward T. White/     Date: 08/04/2021
Signatory's Name: Edward T. White
Signatory's Position: Attorney of Record, Virginia Bar Member

Signatory's Phone Number: 8044206338 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:    Edward T. White
   WILLIAMS MULLEN
   Williams Mullen C/O IP Docketing
   200 South 10th Street, Suite 1600
   RICHMOND, Virginia 23219
Mailing Address:    Edward T. White
   WILLIAMS MULLEN
   Williams Mullen C/O IP Docketing
   200 South 10th Street, Suite 1600
   RICHMOND, Virginia 23219
        
Serial Number: 90286717
Internet Transmission Date: Wed Aug 04 14:39:17 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202108041439175161
76-90286717-7812b62d16861ef7f63bdc9597b6
775b868a103589925dab7d45a95f8c9afc7bd-N/
A-N/A-20210804143737153639