Application

PTO- 1478

Approved for use through 02/28/2021. OMB 0651-0009

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- 1478

Approved for use through 02/28/2021. OMB 0651-0009

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

Trademark/Service Mark Application, Principal Register

Serial Number: 90653371

Filing Date: 04/18/2021

To the Commissioner for Trademarks:

MARK: SHOPIFY CAPITAL (Standard Characters, see mark)
The literal element of the mark consists of SHOPIFY CAPITAL. The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, Shopify Inc., a corporation of Canada, having an address of
      151 O'Connor Street, Ground Floor
      Ottawa, Ontario K2P2L8
      Canada
      XXXX

requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

International Class 009:  Downloadable software for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, database management, sales and customer tracking and inventory management; downloadable software for use in e-commerce and the retail industry, namely, software for point of sale transactions; downloadable application programming interface (API) software that enables developers to build software applications for use in the retail and e-commerce industry; Point of sale terminals; Card readers for credit and debit cards; Chip card readers; Magnetic encoded card readers; Downloadable software development kits (SDK); downloadable computer software development tools; downloadable computer software for the scripting of markup language; downloadable software for use in e-commerce and the retail industry, namely, software for supply chain management, drop shipping, product development and customizations; downloadable software for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, product pricing automation, tracking sales performance, order fulfillment, shipment tracking, database management, sales and customer tracking and inventory customization and management; downloadable software for use in managing business contacts, information and relationships; downloadable software for managing contact information of third parties, for capturing, recording, organizing and managing business transactions, and for managing social interactions between individuals related to business relationships; downloadable software for messaging and communications; downloadable educational software featuring instruction in ecommerce, business development and management, advertising, digital marketing, website design, and customer service; downloadable software for point-of-sale (POS) transactions, tracking sales performance, and managing customers, orders, and inventory; downloadable software for online shopping, tracking deliveries, use as a digital wallet, and discovering local businesses; downloadable software for online promotion, advertising and marketing, namely for search engine and web site optimization, targeted and retargeting advertising, electronic messaging and text marketing, customer data management, and customer relationship management; downloadable software for advertising by transmission of on-line publicity for third parties through electronic communications networks; downloadable software for advertising on the Internet for others; downloadable software for advertising the goods and services of others via electronic media and specifically the internet; downloadable software for compilation of advertisements for use as web pages on the internet, dissemination of advertising for others via the Internet; downloadable software for on-line advertising for others on computer networks and placing advertisements for others; downloadable software for providing electronic commerce services in association with on-line live stream shopping; downloadable software for use in generating streaming advertisements on the web sites of others; downloadable software for use in e-commerce and the retail industry that provides carbon offset information for product deliveries
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.


International Class 035:  Business management and marketing consulting; business management services for online stores; business management services relating to information and data compilation and analysis; business marketing consulting; Promoting, advertising and marketing online web sites of others; targeted and retargeting advertising services; promoting and marketing the goods and services of others via electronic messaging and text messaging; customer data management services; customer relationship management services; Optimization of online websites for third parties; search engine and web site optimization; Operating online marketplaces for sellers and buyers of goods and/or services; arranging and conducting business conferences; business management services relating to supply chain management; business management services relating to drop shipping; business management services relating to product development and customizations; business management and marketing consultation; business management services for online stores; business marketing consultation; business management consultancy; business management assistance; marketing services; provision of an online marketplace for buyers and sellers of goods and services; providing business information via a website; Providing online business account administration service for others in the field of web hosting; business services, namely, customer services for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites, hosting software applications, hosting computer software, hosting electronic databases, hosting digital content, and hosting business computer software applications of others accessible via the Internet; business services, namely, customer services for others in the nature of providing assistance to customers in the field of leasing, configuring, updating, monitoring, optimizing, repairing and troubleshooting computer servers and other computer hardware that support hosted ecommerce, social commerce, retail and marketing websites, hosted software applications, hosted computer software, hosted electronic databases, hosted digital content, and hosted business computer software applications of others accessible via the Internet; business services, namely, customer services for others in the nature of providing assistance to customers in the field of bandwidth provision to ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of managed data storage, backup and restoration of ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of network security management for ecommerce, social commerce, retail and marketing websites; Marketing the goods and services of others by means of location-based advertising; on-line advertising and marketing services; advertising, marketing and promotion services; advertising by transmission of on-line publicity for third parties through electronic communications networks; advertising on the Internet for others; advertising the goods and services of others via electronic media and specifically the internet; compilation of advertisements for use as web pages on the internet; dissemination of advertising for others via the Internet; on-line advertising for others on computer networks; placing advertisements for others; providing electronic commerce services in association with on-line live stream shopping; dissemination of streaming advertisements for use on the web sites of others; order fulfilment services; Computerized tracking and tracing of packages in transit to ensure on-time delivery for business purposes
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.


International Class 036:  Cash advance services for businesses and merchants; Providing electronic processing of credit card transactions and electronic payments via a global computer network; Loan services; Financial account services for businesses and merchants; Payment services, namely, processing of credit card and debit card payments initiated via mobile electronic devices and digital wallets; Gift card transaction processing services; financial information processing; accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network; accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions; insurance services, namely, coverage services for loss or damage during shipment of goods of others; providing extended warranty service contracts on consumer goods of others
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.


International Class 038:  Communication transmissions through internet platforms and portals; transmission of information on various topics via online and global computer networks; computer transmission of messages; transmission (uploading, posting or display) of data, information, pictures, images via online forums, audio and video; provide online computer information inventory; provide online forums; consulting services related to communication transmission; computer communication services; point-of-sale communication transmission services; provide online communication to transfer website users to other regional web pages and global web pages transmission link; electronic messaging services; instant messaging services; video streaming of video material on the internet
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.


International Class 039:  Parcel shipping services; freight forwarding services; delivery of goods; providing shipping and delivery information
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.


International Class 041:  Arranging and conducting educational conferences; educational services, namely, developing, arranging, and conducting educational conferences and programs in the fields of e-commerce and technology; Providing on-line training courses, seminars, and workshops in the field of e-commerce, business management, advertising, digital marketing, website design, and customer service; entertainment services in the nature of creation, development, and production of television programming; entertainment in the nature of ongoing television programs in the field of e-commerce, business management, and entrepreneurship; providing television programs, not downloadable, via video-on-demand transmission services; entertainment services, namely, production and distribution of ongoing television programs in the field of e-commerce, business management, and entrepreneurship; entertainment, namely, a continuing educational and reality shows broadcast over internet, television, and video media
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.


International Class 042:  Creation of online retail stores for others in the nature of web-based service that allows users to create hosted e-commerce stores to sell their goods and services online; providing an online platform featuring technology that enables users to create a unique URL for an online store and the ability for users to manage the content and inventory of their online store; design, creation, hosting and maintenance of internet sites for third parties; Software as a Service (SAAS) featuring software for use in e-commerce and the retail industry to allow users to perform electronic business transactions via a global computer network; Software as a Service (SAAS) services featuring software for use in database management, sales and customer tracking and management, and inventory management for the retail industry; providing an online platform featuring online non-downloadable computer software for use in the retail and e-commerce industry for facilitating retail store services; Software support services, namely, technical support services in the nature of troubleshooting of computer software problems; Technical support services, namely, troubleshooting of computer software problems; software as a service (SAAS) services, namely, hosting software for use by others for use as a software code translation service; application service provider featuring software for use as a software code translation service; Software as a service (SAAS) services featuring software for computer software development tools; providing temporary use of non-downloadable computer software development tools and computer software for the scripting of markup language; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry, namely, software for supply chain management, drop shipping, and product development and customizations; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry, namely, software to allow users to perform business management via a global computer network, namely, product pricing automation, tracking sales performance, order fulfillment, shipment tracking, database management, sales and customer tracking and inventory customization and management; providing temporary use of non-downloadable computer software for use in managing business contacts, information and relationships; providing temporary use of non-downloadable computer software for managing contact information of third parties, for capturing, recording, organizing and managing business transactions, and for managing social interactions between individuals related to business relationships; Computer services in the nature of providing customized web pages and other data feed formats featuring user-defined information; providing temporary use of online non-downloadable software for customer relationship management and customer data management; providing temporary use of non-downloadable software for messaging and communications; providing temporary use of non-downloadable educational software featuring instruction in ecommerce, business development and management, advertising, digital marketing, website design, and customer service; providing temporary use of non-downloadable software for point-of-sale (POS) transactions, tracking sales performance, and managing customers, orders, and inventory; providing temporary use of non-downloadable software for online shopping, tracking deliveries, use as a digital wallet, and discovering local businesses; providing temporary use of non-downloadable software for online promotion, advertising and marketing, namely for search engine and web site optimization, targeted and retargeting advertising, electronic messaging and text marketing, customer data management, and customer relationship management; providing temporary use of non-downloadable software for advertising by transmission of on-line publicity for third parties through electronic communications networks; providing temporary use of non-downloadable software for advertising on the Internet for others; providing temporary use of non-downloadable software for advertising the goods and services of others via electronic media and specifically the internet; providing temporary use of non-downloadable software for compilation of advertisements for use as web pages on the internet, dissemination of advertising for others via the Internet; providing temporary use of non-downloadable software for on-line advertising for others on computer networks and placing advertisements for others; providing temporary use of non-downloadable software for providing electronic commerce services in association with on-line live stream shopping; providing temporary use of non-downloadable software for use in generating streaming advertisements on the web sites of others; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry that provides carbon offset information for product deliveries
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

Priority based on foreign filing: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services and asserts a claim of priority based on Canada application number 2,096,858, filed 04/01/2021.
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.



Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3840412, 3208463, 5225833, and others.


The owner's/holder's proposed attorney information: Richard J. Groos. Other appointed attorneys are Sheri M. Hunter, Brandon M. Ress, Lena Colin and any other attorneys with the law firm. Richard J. Groos of King & Spalding 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
      500 West 2nd Street, 1800
      Austin, Texas 78701
      United States
      512-457-2018(phone)
      512-457-2100(fax)
      aotrademark@kslaw.com

Richard J. Groos 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.

The applicant's current Correspondence Information:

Richard J. Groos

PRIMARY EMAIL FOR CORRESPONDENCE: aotrademark@kslaw.com        SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): emolson@kslaw.com Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

A fee payment in the amount of $2450 has been submitted with the application, representing payment for 7 class(es).

Declaration

	Basis: If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a): The signatory believes that the applicant is the owner of the trademark/service 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 on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application and was used on or in connection with the goods/services in the application as of the application filing date; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate. And/Or If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e): The signatory believes that the applicant is entitled to use the mark in commerce; 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 on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
	To the best of the signatory's knowledge and belief, no other persons, except, if applicable, 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 of such other persons, to cause confusion or mistake, or to deceive.
	To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
	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 all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Declaration Signature

Signature: /Robert Guay/   Date: 04/16/2021
Signatory's Name: Robert Guay
Signatory's Position: Senior IP Counsel
Signatory's Phone Number: 613-790-2844
Signature method: Sent to third party for signature
Payment Sale Number: 90653371
Payment Accounting Date: 04/19/2021

Serial Number: 90653371
Internet Transmission Date: Sun Apr 18 19:26:43 ET 2021
TEAS Stamp: USPTO/BAS-XX.XXX.XX.XX-20210418192643109
255-90653371-770c2e464aa9ed9e7d9186e1b24
90a8e29cfb86ff7d7cf07a12618f754929ec06-C
C-26412448-20210405193731530161