Response to Office Action

PTO- 1957

Approved for use through 01/31/2027. 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 01/31/2027. 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. 98100696 FLAGSTAR (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9810069 6/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This communication responds to the Office Action issued on April 18, 2024 in connection with the subject trademark application. Applicant has amended its description of services for Classes 35 and 36, adopting the Examining Attorney?s recommendations. Applicant will not perfect the Section 44(e) basis and will instead proceed upon the Section 1(b) intent to use basis and retaining the priority claim under Section 44(d). In view of the foregoing, Applicant contends that all outstanding issues have been resolved and the subject application is now in condition for publication. Formal notice in that regard is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer terminals for banking purposes; Downloadable mobile applications for managing financial and bank accounts; Downloadable computer application software for mobile banking services for managing and accessing financial and banking accounts, and carrying out financial transactions; Automatic teller machines (ATM); Downloadable computer application software for providing mobile banking services; Downloadable computer software for managing cryptocurrency transactions using blockchain technology
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.

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[ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 009 for Computer terminals for banking purposes; Downloadable mobile applications for managing financial and bank accounts; Downloadable computer application software for mobile banking services for managing and accessing financial and banking accounts, and carrying out financial transactions; Automatic teller machines (ATM); Downloadable computer application software for providing mobile banking services; Downloadable computer software for managing cryptocurrency transactions using blockchain technology
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


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 [ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.

Applicant proposes to amend the following:

Current:
Class 016 for Bank checks
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.

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[ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 016 for Bank checks
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


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 [ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.

Applicant proposes to amend the following:

Current:
Class 035 for Promotional sponsorship of sporting events; Promotional sponsorship of various other entertainment media, namely, professional sporting events, scholastic, educational and charitable events; Promoting, marketing, and advertising sports, entertainment, scholastic, educational and charitable events of others; Electronic billboard advertising; Credit card registration services; Payroll processing
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.

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[ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Promotional sponsorship of sporting events; Promotional sponsorship of various other entertainment media, namely, professional sporting events, scholastic, educational and charitable events; Promoting, marketing, and advertising sports, entertainment, scholastic, educational and charitable events of others; Electronic billboard advertising; Credit card registration services; Payroll processing; Payroll processing services for othersClass 035 for Promotional sponsorship of sporting events; Promotional sponsorship of various other entertainment media, namely, professional sporting events, scholastic, educational and charitable events; Promoting, marketing, and advertising sports, entertainment, scholastic, educational and charitable events of others; Electronic billboard advertising; Credit card registration services; Payroll processing services for others
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


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 [ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.

Applicant proposes to amend the following:

Current:
Class 036 for Banking and financing services; Online banking services; ATM banking services; Merchant banking services; Checking account services; Savings account services; Deposit account services, namely, checking account services, savings account services, certificate of deposit services, namely, banking services featuring the provision of certificates of deposit; Banking consultancy and advisory services; Financial consultancy and advisory services; Savings and loan services; Financial services, namely, mortgage planning services, mortgage financing and refinancing services, mortgage services, namely, money lending for the purchase and refinance of consumer real estate; Financial services, namely, consumer and commercial money lending services, mortgage planning services, mortgage financing and refinancing services, debt settlement services, wealth management services, funding online cash accounts from prepaid cash card services; Mortgage services, namely, money lending for the purchase and refinance of commercial and consumer real estate, mortgage sub-servicing, namely, mortgage payment services; Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Individual retirement account services; Debit card services, namely, provision and financial administration of a debit card savings program, debit card transaction processing services, processing of debit card payments; Credit card services, namely, credit card issuance services, credit card authorization services, credit card factoring services, credit card transaction payment processing and merchant banking services; Treasury management services, namely, financial administration and management of a treasury; Sweep account services for administration, collection and management of finances, remote check deposit capture services, wire transfer services; Banking services featuring online viewing of images of cleared paper checks; Paper check verification services; Banking services, namely, cash vault services; Banking services for the controlled disbursement of funds services; Fraud protection, namely, reimbursement of fraudulent charges detected in the field of bank accounts and credit card purchases; The purchase of residential mortgages on behalf of others and the issuance of mortgage-backed securities; Safety deposit box services; Charitable foundation services, namely, providing financial assistance for programs and services of others; Mobile banking services; Issuance of credit cards; Issuance of bank checks; Banking as a service (BaaS), namely, providing end-to-end processes for executing financial and banking services; Financial services, namely, electronic transfer of crypto assets; Financial exchange of crypto assets; Blockchain-based payment verification services; Cryptocurrency exchange services featuring blockchain technology; assuming financial risk of others by entering into options and swaps; financial services, namely, conducting a securities and derivatives exchange; financial services, namely, the trading of financial instruments, securities, shares, options and other derivative products
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.

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[ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Banking and financing services; Online banking services; ATM banking services; Automatic teller machine (ATM) banking services; Merchant banking services; Checking account services; Savings account services; Deposit account services, namely, checking account services, savings account services, certificate of deposit services, namely, banking services featuring the provision of certificates of deposit; Banking consultancy and advisory services; Financial consultancy and advisory services; Savings and loan services; Financial services, namely, mortgage planning services, mortgage financing and refinancing services, mortgage services, namely, money lending for the purchase and refinance of consumer real estate; Financial services, namely, consumer and commercial money lending services, mortgage planning services, mortgage financing and refinancing services, debt settlement services, wealth management services, funding online cash accounts from prepaid cash card services; Mortgage services, namely, money lending for the purchase and refinance of commercial and consumer real estate, mortgage sub-servicing, namely, mortgage payment services; Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Individual retirement account services; Debit card services, namely, provision and financial administration of a debit card savings program, debit card transaction processing services, processing of debit card payments; Credit card services, namely, credit card issuance services, credit card authorization services, credit card factoring services, credit card transaction payment processing and merchant banking services; Treasury management services, namely, financial administration and management of a treasury; Sweep account services for administration, collection and management of finances, remote check deposit capture services, wire transfer services; Banking services featuring online viewing of images of cleared paper checks; Paper check verification services; Banking services, namely, cash vault services; Banking services for the controlled disbursement of funds services; Fraud protection, namely, reimbursement of fraudulent charges detected in the field of bank accounts and credit card purchases; The purchase of residential mortgages on behalf of others and the issuance of mortgage-backed securities; Safety deposit box services; Charitable foundation services, namely, providing financial assistance for programs and services of others; Mobile banking services; Issuance of credit cards; Issuance of bank checks; Banking as a service (BaaS), namely, providing end-to-end processes for executing financial and banking services; Financial services, namely, electronic transfer of crypto assets; Financial exchange of crypto assets; Blockchain-based payment verification services; Cryptocurrency exchange services featuring blockchain technology; assuming financial risk of others by entering into options and swaps; financial services, namely, conducting a securities and derivatives exchange; financial services, namely, the trading of financial instruments, securities, shares, options and other derivative productsClass 036 for Banking and financing services; Online banking services; Automatic teller machine (ATM) banking services; Merchant banking services; Checking account services; Savings account services; Deposit account services, namely, checking account services, savings account services, certificate of deposit services, namely, banking services featuring the provision of certificates of deposit; Banking consultancy and advisory services; Financial consultancy and advisory services; Savings and loan services; Financial services, namely, mortgage planning services, mortgage financing and refinancing services, mortgage services, namely, money lending for the purchase and refinance of consumer real estate; Financial services, namely, consumer and commercial money lending services, mortgage planning services, mortgage financing and refinancing services, debt settlement services, wealth management services, funding online cash accounts from prepaid cash card services; Mortgage services, namely, money lending for the purchase and refinance of commercial and consumer real estate, mortgage sub-servicing, namely, mortgage payment services; Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; Individual retirement account services; Debit card services, namely, provision and financial administration of a debit card savings program, debit card transaction processing services, processing of debit card payments; Credit card services, namely, credit card issuance services, credit card authorization services, credit card factoring services, credit card transaction payment processing and merchant banking services; Treasury management services, namely, financial administration and management of a treasury; Sweep account services for administration, collection and management of finances, remote check deposit capture services, wire transfer services; Banking services featuring online viewing of images of cleared paper checks; Paper check verification services; Banking services, namely, cash vault services; Banking services for the controlled disbursement of funds services; Fraud protection, namely, reimbursement of fraudulent charges detected in the field of bank accounts and credit card purchases; The purchase of residential mortgages on behalf of others and the issuance of mortgage-backed securities; Safety deposit box services; Charitable foundation services, namely, providing financial assistance for programs and services of others; Mobile banking services; Issuance of credit cards; Issuance of bank checks; Banking as a service (BaaS), namely, providing end-to-end processes for executing financial and banking services; Financial services, namely, electronic transfer of crypto assets; Financial exchange of crypto assets; Blockchain-based payment verification services; Cryptocurrency exchange services featuring blockchain technology; assuming financial risk of others by entering into options and swaps; financial services, namely, conducting a securities and derivatives exchange; financial services, namely, the trading of financial instruments, securities, shares, options and other derivative products
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


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 [ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.

Applicant proposes to amend the following:

Current:
Class 041 for Entertainment services in the nature of live visual and audio performances, namely, musical, variety, news and comedy shows
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.

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[ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 041 for Entertainment services in the nature of live visual and audio performances, namely, musical, variety, news and comedy shows
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


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 [ Trinidad and Tobago application number 59778 filed 02/27/2023]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.
Correspondence Information
      Jessica S. Sachs
      PRIMARY EMAIL FOR CORRESPONDENCE: troymailroom@harnessip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jsachs@harnessip.com; hrowe@harnessip.com

The docket/reference number is 17467-200056.

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: /jss/     Date: 07/11/2024
Signatory's Name: Jessica S. Sachs
Signatory's Position: Attorney for Applicant; An Attorney at Harness, Dickey & Pierce, P.L.C. having actual or implied, written or oral, power of attorney from Applicant

Signatory's Phone Number: 248-641-1292 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:    Jessica S. Sachs
   HARNESS, DICKEY & PIERCE, P.L.C.
   SUITE 200
   5445 CORPORATE DRIVE
   TROY, Michigan 48098
Mailing Address:    Jessica S. Sachs
   HARNESS, DICKEY & PIERCE, P.L.C.
   SUITE 200
   5445 CORPORATE DRIVE
   TROY, Michigan 48098
        
Serial Number: 98100696
Internet Transmission Date: Thu Jul 11 09:59:22 ET 2024
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2024071109592280
7626-98100696-850993040aaf3db5b3599471f3
b56073b5812b984eac8d42c5ffb4d5e487dd0e9-
N/A-N/A-20240711092221613078