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. 97302767 AMERICAN EXPRESS(Standard Characters, see http://uspto.report/TM/97302767/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes accessible in the metaverse and in other virtual worlds

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software for facilitating the transfer of a virtual payment card to an electronic or mobile wallet; downloadable computer software for creating, distributing, and managing physical and virtual payment cards and card transactions; Downloadable computer software and applications for mobile devices for facilitating and administering banking, payment by credit card, debit card, or virtual payment card, automatic teller machine services, stored value card services, electronic funds transfer services, electronic payment processing services, electronic processing and transmission of bill payment data, cash disbursement services, transaction authentication services, routing, authorization and settlement services, and fraud detection and control services in the metaverse and other virtual worlds; Downloadable computer software and applications for mobile devices comprising a digital wallet that stores customer account information and permits consumers to access coupons, vouchers, voucher codes, discount codes, and rebates at retailers and to obtain loyalty or monetary rewards that can be credited to their accounts in the metaverse and other virtual worlds; Downloadable computer ecommerce software to allow users to perform electronic business transactions in the metaverse and other virtual worlds; Downloadable music files authenticated by non-fungible tokens (NFTs); downloadable multimedia files containing artwork, text, audio, and video authenticated by non-fungible tokens (NFTs)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Downloadable computer software for facilitating the transfer of a virtual payment card to an electronic or mobile wallet; downloadable computer software for creating, distributing, and managing physical and virtual payment cards and card transactions; Downloadable computer software and applications for mobile devices for facilitating and administering banking, payment by credit card, debit card, or virtual payment card, automatic teller machine services, stored value card services, electronic funds transfer services, electronic payment processing services, electronic processing and transmission of bill payment data, cash disbursement services, transaction authentication services, routing, authorization and settlement services, and fraud detection and control services in the metaverse and other virtual worlds; Downloadable computer software and applications for mobile devices comprising a digital wallet that stores customer account information and permits consumers to access coupons, vouchers, voucher codes, discount codes, and rebates at retailers and to obtain loyalty or monetary rewards that can be credited to their accounts in the metaverse and other virtual worlds; Downloadable computer ecommerce software to allow users to perform electronic business transactions in the metaverse and other virtual worlds; Downloadable music files authenticated by non-fungible tokens (NFTs); downloadable multimedia files containing artwork, text, audio, and video authenticated by non-fungible tokens (NFTs); downloadable multimedia files containing artwork, text, audio, and video relating to virtual goods, namely, apparel, footwear, eyewear, bags, backpacks, toys, sporting equipment, namely, tennis racquets, tennis balls, golf clubs, golf balls, basketballs, soccer balls, all of the foregoing authenticated by non-fungible tokens (NFTs)Class 009 for Downloadable computer software for facilitating the transfer of a virtual payment card to an electronic or mobile wallet; downloadable computer software for creating, distributing, and managing physical and virtual payment cards and card transactions; Downloadable computer software and applications for mobile devices for facilitating and administering banking, payment by credit card, debit card, or virtual payment card, automatic teller machine services, stored value card services, electronic funds transfer services, electronic payment processing services, electronic processing and transmission of bill payment data, cash disbursement services, transaction authentication services, routing, authorization and settlement services, and fraud detection and control services in the metaverse and other virtual worlds; Downloadable computer software and applications for mobile devices comprising a digital wallet that stores customer account information and permits consumers to access coupons, vouchers, voucher codes, discount codes, and rebates at retailers and to obtain loyalty or monetary rewards that can be credited to their accounts in the metaverse and other virtual worlds; Downloadable computer ecommerce software to allow users to perform electronic business transactions in the metaverse and other virtual worlds; Downloadable music files authenticated by non-fungible tokens (NFTs); downloadable multimedia files containing artwork, text, audio, and video relating to virtual goods, namely, apparel, footwear, eyewear, bags, backpacks, toys, sporting equipment, namely, tennis racquets, tennis balls, golf clubs, golf balls, basketballs, soccer balls, all of the foregoing authenticated by non-fungible tokens (NFTs)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


Applicant proposes to amend the following:

Current:
Class 035 for Promoting the use of credit and charge cards through the administration of incentive rewards programs and the offering of special offers and promotions of others to cardmembers in the metaverse and other virtual worlds; Provision of an online marketplace for buyers and sellers of downloadable digital goods, namely, art images, music, video clips, entertainment, virtual goods, namely, apparel, footwear, eyewear, bags, backpacks, toys, sporting equipment, namely, tennis racquets, tennis balls, golf clubs, golf balls, basketballs, soccer balls, all of the foregoing authenticated by non-fungible tokens (NFTs)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Promoting the use of credit and charge cards through the administration of incentive rewards programs and the offering of special offers and promotions of others to cardmembers in the metaverse and other virtual worlds; Provision of an online marketplace for buyers and sellers of downloadable digital goods, namely, art images, music, video clips, entertainment, virtual goods, namely, apparel, footwear, eyewear, bags, backpacks, toys, sporting equipment, namely, tennis racquets, tennis balls, golf clubs, golf balls, basketballs, soccer balls, all of the foregoing authenticated by non-fungible tokens (NFTs); Provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)Class 035 for Promoting the use of credit and charge cards through the administration of incentive rewards programs and the offering of special offers and promotions of others to cardmembers in the metaverse and other virtual worlds; Provision of an online marketplace for buyers and sellers of downloadable digital goods, namely, art images, music, video clips, entertainment, virtual goods, namely, apparel, footwear, eyewear, bags, backpacks, toys, sporting equipment, namely, tennis racquets, tennis balls, golf clubs, golf balls, basketballs, soccer balls, all of the foregoing authenticated by non-fungible tokens (NFTs); Provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


Applicant proposes to amend the following:

Current:
Class 036 for Assistance with electronic transfers of money in the metaverse and other virtual worlds; Banking services in the metaverse and other virtual worlds; Issuing and processing payments of virtual prepaid cards, virtual prepaid gift cards, virtual stored value cards, and virtual payment cards in the metaverse and other virtual worlds; Financial exchange of virtual currency; Electronic transfer of virtual currencies; Payment processing services, namely, charge card, credit card, prepaid card, gift card, stored value card and payment card transaction processing services in the metaverse and other virtual worlds; Virtual charge card, virtual credit card, virtual prepaid card, virtual gift card, virtual stored value card and virtual payment card transaction processing services; Issuing of virtual charge cards, virtual credit cards, virtual prepaid cards, virtual prepaid gift cards, virtual stored value cards and virtual payment cards; Digital currency services, namely, currency trading of crypto currencies; Cryptocurrency services, namely, currency trading of crypto currencies; Virtual currency services, namely, currency trading of crypto currencies; Financial services relating to electronic wallet services, namely, providing consumers of merchants and businesses with an e-wallet account in the nature of establishing electronic funded accounts for use in making secure payments for purchasing goods and services from such businesses; Bill payment services provided via an electronic wallet; Electronic wallet services, namely processing of electronic wallet payments; Cash management, namely, facilitating transfers of electronic cash equivalents; Management of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Financial services, namely, providing a financial exchange for the trading of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Cryptocurrency trading services; Cryptocurrency exchange services; Cryptocurrency payment processing; Financial consultation in the field of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Providing electronic processing and tracking of electronic funds transfers
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Assistance with electronic transfers of money in the metaverse and other virtual worlds; Banking services in the metaverse and other virtual worlds; Issuing and processing payments of virtual prepaid cards, virtual prepaid gift cards, virtual stored value cards, and virtual payment cards in the metaverse and other virtual worlds; Financial exchange of virtual currency; Electronic transfer of virtual currencies; Payment processing services, namely, charge card, credit card, prepaid card, gift card, stored value card and payment card transaction processing services in the metaverse and other virtual worlds; Virtual charge card, virtual credit card, virtual prepaid card, virtual gift card, virtual stored value card and virtual payment card transaction processing services; Issuing of virtual charge cards, virtual credit cards, virtual prepaid cards, virtual prepaid gift cards, virtual stored value cards and virtual payment cards; Digital currency services, namely, currency trading of crypto currencies; Cryptocurrency services, namely, currency trading of crypto currencies; Virtual currency services, namely, currency trading of crypto currencies; Financial services relating to electronic wallet services, namely, providing consumers of merchants and businesses with an e-wallet account in the nature of establishing electronic funded accounts for use in making secure payments for purchasing goods and services from such businesses; Bill payment services provided via an electronic wallet; Electronic wallet services, namely processing of electronic wallet payments; Cash management, namely, facilitating transfers of electronic cash equivalents; Management of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Cash management; Financial services, namely, providing a financial exchange for the trading of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Cryptocurrency trading services; Management of digital currency, virtual currency, cryptocurrency; Financial services, namely, providing a financial exchange for the trading of digital currency, virtual currency, cryptocurrency; Cryptocurrency trading services; Financial consultation in the field of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Cryptocurrency exchange services; Cryptocurrency payment processing; Financial consultation in the field of digital currency, virtual currency, cryptocurrency; Providing electronic processing and tracking of electronic funds transfersClass 036 for Assistance with electronic transfers of money in the metaverse and other virtual worlds; Banking services in the metaverse and other virtual worlds; Issuing and processing payments of virtual prepaid cards, virtual prepaid gift cards, virtual stored value cards, and virtual payment cards in the metaverse and other virtual worlds; Financial exchange of virtual currency; Electronic transfer of virtual currencies; Payment processing services, namely, charge card, credit card, prepaid card, gift card, stored value card and payment card transaction processing services in the metaverse and other virtual worlds; Virtual charge card, virtual credit card, virtual prepaid card, virtual gift card, virtual stored value card and virtual payment card transaction processing services; Issuing of virtual charge cards, virtual credit cards, virtual prepaid cards, virtual prepaid gift cards, virtual stored value cards and virtual payment cards; Digital currency services, namely, currency trading of crypto currencies; Cryptocurrency services, namely, currency trading of crypto currencies; Virtual currency services, namely, currency trading of crypto currencies; Financial services relating to electronic wallet services, namely, providing consumers of merchants and businesses with an e-wallet account in the nature of establishing electronic funded accounts for use in making secure payments for purchasing goods and services from such businesses; Bill payment services provided via an electronic wallet; Electronic wallet services, namely processing of electronic wallet payments; Cash management, namely, facilitating transfers of electronic cash equivalents; Cash management; Cryptocurrency trading services; Management of digital currency, virtual currency, cryptocurrency; Financial services, namely, providing a financial exchange for the trading of digital currency, virtual currency, cryptocurrency; Cryptocurrency trading services; Cryptocurrency exchange services; Cryptocurrency payment processing; Financial consultation in the field of digital currency, virtual currency, cryptocurrency; Providing electronic processing and tracking of electronic funds transfers
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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 (Original Class: 042 ) for Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes accessible in the metaverse and in other virtual worlds
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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

Correspondence Information
      Timothy J. Kelly
      PRIMARY EMAIL FOR CORRESPONDENCE: Tim@TJKIPLaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@tjkiplaw.com; kerry.a.farrell@aexp.com; tmdocketing@aexp.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: /tjk/     Date: 08/10/2023
Signatory's Name: Timothy J. Kelly
Signatory's Position: Attorney of Record, New Jersey Bar Member

Signatory's Phone Number: 9082309105 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:    Timothy J. Kelly
   TJ KELLY INTELLECTUAL PROPERTY LAW, PC
   
   PO BOX 128
   BAY HEAD, New Jersey 08742
Mailing Address:    Timothy J. Kelly
   TJ KELLY INTELLECTUAL PROPERTY LAW, PC
   PO BOX 128
   BAY HEAD, New Jersey 08742
        
Serial Number: 97302767
Internet Transmission Date: Thu Aug 10 12:46:02 ET 2023
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XX-20230810124602721
085-97302767-850c83674c3eb84efcbea9a838b
0a6b603f78156e353f5a1a21a02fa4d75f9b2f-N
/A-N/A-20230810123556367351