Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1166097
`10/14/2021
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92076740
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`Party
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`Correspondence
`Address
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`Plaintiff
`Wise Payments Limited
`
`BEN NATTER
`HAUG PARTNERS, LLP
`745 FIFTH AVENUE
`NEW YORK, NY 10151
`UNITED STATES
`Primary Email: bnatter@haugpartners.com
`Secondary Email(s): docket@haugpartners.com, MBarer@haugpartners.com,
`MHarris@haugpartners.com, TTAB@haugpartners.com,
`bdahl@haugpartners.com
`212-588-0800
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Response to Board Order/Inquiry
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`Michael Barer
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`mbarer@haugpartners.com
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`/Michael Barer/
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`10/14/2021
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`Attachments
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`Notice of Civil Action Cancellation No. 92076740.pdf(4722243 bytes )
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Petitioner,
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`v.
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`Wise Payments Limited,
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`
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`Rungtham Pornprasit,
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`
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`Registrant.
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`Cancellation No. 92076740
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`NOTICE OF CIVIL ACTION
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`Petitioner, Wise Payments Limited (“Petitioner”), respectfully writes to notify the Board
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`that the parties to this Cancellation Proceeding are involved in a civil action in the United States
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`District Court for the District of New Jersey, captioned Transferwise Ltd. v. Wiselywire Inc. et al.,
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`C.A. No. 2:20-cv-16903-JXN-LDW (the “District Court Proceeding”). In Opposition No.
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`91265595 and Cancellation No. 92075820, also involving the parties to this Cancellation
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`Proceeding, the Board noted that “it has come to the Board’s attention that the parties are involved
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`in a civil action,” and allowed Petitioner “twenty days [] in which to file a copy of the pleadings
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`in the civil action so that the Board may determine whether suspension of [those] proceeding[s]
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`pending final determination of the civil action is warranted and appropriate.” For the convenience
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`of the Board in this Cancellation Proceeding, Petitioner herein also attaches the pleadings filed in
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`the District Court Proceeding, as Exhibit A.
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`1
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`Dated: New York, NY
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`October 14, 2021
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`Respectfully Submitted,
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`
`HAUG PARTNERS LLP
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`
`
`/s/ Ben Natter
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`By:
`
`Ben Natter, Esq.
`745 Fifth Avenue
`New York, New York 10151
`Tel: (212) 588-0800
`Email: bnatter@haugpartners.com
`
`docket@haugpartners.com
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`Attorneys for Petitioner
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`
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`2
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`CERTIFICATE OF SERVICE
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`On this 14th day of October, 2021, a true and correct copy of the foregoing document,
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`was served by e-mailing a copy to Registrant’s counsel: John Francis Ciaramella, at the address
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`of: frank@fjcpllc.com, as required by the Trademark Trial and Appeal Board.
`
` /s/ Michael Barer
`Michael Barer
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`

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`EXHIBIT A
`EXHIBIT A
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 1 of 11 PageID: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`Civil Case No. _______________
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`: : : : : : : : : : : : :
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`TRANSFERWISE LTD.,
`
`Plaintiff,
`
`v.
`
`WISELYWIRE INC. AND
`RUNGTHAM PORNPRASIT,
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`Defendants.
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`Plaintiff TransferWise Ltd. (“TransferWise” or “Plaintiff”), by its undersigned attorneys,
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`COMPLAINT
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`for its Complaint against Wiselywire Inc. (“Wiselywire”) and Rungtham Pornprasit
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`(“Pornprasit”) (collectively “Defendants”), herein alleges as follows:
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`NATURE OF THE ACTION
`
`1.
`
`TransferWise brings
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`this civil action against Defendants
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`for
`
`trademark
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`infringement under the trademark laws of the United States, Title 15, United States Code,
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`involving United States Registration Nos. 6,017,793; 6,017,791; 4,971,081; and 5,730,545
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`(collectively “TransferWise’s Trademarks”).
`
`TransferWise also brings claims against
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`Defendants for common law trademark infringement, unfair competition under N.J.S.A. § 56:4-
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`1 and 15 U.S.C. § 1125(a) and trademark dilution under 15 U.S.C. § 1125(c) and N.J.S.A. § 56:3-
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`13.20.
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`THE PARTIES
`
`2.
`
`TransferWise is a limited company organized and existing under the laws of
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`England and Wales, and its principal place of business is located at 6th Floor, Tea Building, 56
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 2 of 11 PageID: 2
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`Shoreditch High Street, London E16JJ, United Kingdom. TransferWise also has its main US
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`office at 19 West 24th Street, New York, NY 10010.
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`3.
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`Upon information and belief, Wiselywire is a California corporation, and its
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`principal place of business is located at 71 Stevenson St., Suite 400, San Francisco, CA 94105.
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`4.
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`Upon information and belief, Pornprasit is Wiselywire’s chief executive officer,
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`secretary, chief financial officer, and director. Upon information and belief, Pornprasit is a citizen
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`of California, and resides at 6650 Linda Vista Rd., Apt. F6, San Diego, CA 92111.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §
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`1121(a) and 28 U.S.C. §§ 1331, 1338(a) and (b), and 1367(a). This Court also has subject
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`matter jurisdiction over this action pursuant to 28 U.S.C. § 1332(a) because there is complete
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`diversity of citizenship, and the amount in controversy exceeds $75,000, exclusive of interest
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`and costs.
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`6.
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`Upon information and belief, Defendants regularly transact business in New
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`Jersey. Upon information and belief, at least some of Defendants’ tortious acts that are the
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`subject of the present suit have been, and are continuing to be, committed in New Jersey.
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`Accordingly, this Court has personal jurisdiction over Defendants under N.J. Sup. Ct. R.
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`7.
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`Venue is proper under 28 U.S.C. §§ 1391(b) and (c).
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`BACKGROUND FACTS
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`A.
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`TransferWise’s Marks
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`8.
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`On March 24, 2020, United States Registration No. 6,017,793 issued on the
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`Principal Register for the mark
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`11rransferWise
`. A copy of the certificate of registration
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`is attached hereto as Exhibit A.
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`2
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 3 of 11 PageID: 3
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`9.
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`On March 24, 2020, United States Registration No. 6,017,791 issued on the
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`Principal Register for the mark
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`TRANSFER WISE
`. A copy of the certificate of
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`registration is attached hereto as Exhibit B.
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`10. On June 7, 2016, United States Registration No. 4,971,081 issued on the Principal
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`Register for the mark
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`1lTransferWise
`. A copy of the certificate of registration is
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`attached hereto as Exhibit C.
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`11. On April 23, 2019, United States Registration No. 5,730,545 issued on the Principal
`
`Register for the mark
`
`. A copy of the certificate of registration is attached
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`TransferWise Borderless
`
`hereto as Exhibit D.
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`12.
`
`TransferWise owns, and has continuously owned, TransferWise’s Trademarks.
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`13.
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`TransferWise has been using the word mark TRANSFERWISE in commerce in the
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`United States since 2014 and has been using its TRANSFERWISE word mark globally since
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`2011.
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`14.
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`In addition to its common law rights to its marks, TransferWise has achieved
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`considerable goodwill and fame in the United States and abroad in connection with its
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`international fund transfer services, financial account services, debit card offering, and other
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`financial services-related offerings, in connection with its marks. TransferWise has also achieved
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`considerable goodwill and fame in the United States and abroad in connection with its
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`downloadable mobile-phone payment application, web-based application, and computer software
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`platforms for
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`financial services-related offerings,
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`including facilitating foreign currency
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`payments, financial accounts and magnetically encoded debit cards, in connection with its marks.
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`3
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 4 of 11 PageID: 4
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`15.
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`TransferWise has been ranked as a top technology company by various
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`international publications, and, as of 2020, had a total user base of 8 million people, who transfer
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`more than the equivalent of 5 billion dollars per month. Over 1 million users of TransferWise’s
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`products and services are domiciled in the United States.
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`16. As of 2020, TransferWise was regarded as one of the most valuable financial
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`technology companies in Europe, with a valuation of 5 billion dollars.
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`17.
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`TransferWise is widely considered to be the market leader for its payment and
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`international fund transfer service offerings, which are used by both individuals and businesses.
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`B.
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`Defendants’ Confusingly Similar Services
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`18. Upon information and belief, Defendants, on or around October 11, 2018, filed an
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`intent-to-use- application for the mark
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`WJ!il.!LY rR,\N~ I LR
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`with the United States Patent and
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`Trademark Office. The application bears U.S. Serial Number 88/150,941. The application seeks
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`registration in International Classes 36, 38, and 39, for money transfer, telecommunications
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`services (namely, providing prepaid minutes for use on cell phones abroad), and travel agency
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`services (namely, making reservations and bookings for transportation). A copy of the application
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`is attached hereto as Exhibit E.
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`19. Upon information and belief, Defendants have begun offering money transfer
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`services under the mark “WISELYTRANSFER.” A sample of Defendants’ offerings can be
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`found
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`at
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`https://www.wiselytransfer.com,
`
`https://www.wiselywire.com,
`
`and
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`https://www.youtube.com/watch?v=c5Ee3XbN3n4.
`
`4
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 5 of 11 PageID: 5
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`20. Upon information and belief, Defendants market their services under the mark
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`“WISELYTRANSFER” in many states in the United States, including, among other places, in
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`New Jersey.
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`21. Upon information and belief, Defendants were aware of TransferWise’s reputation
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`and goodwill in connection with its foreign-currency payment services, customer account
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`services, debit card offering, and related financial services and software applications.
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`22. Upon information and belief, Defendants were aware of TransferWise’s
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`Trademarks. For example, TransferWise sent demand letters to Defendants on February 11, 2020,
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`September 11, 2020, and October 6, 2020 (letters attached hereto as Exhibits F, G, and H,
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`respectively). Upon information and belief, Defendants received those letters. Defendants failed
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`to respond to any of the letters. Despite these warnings, Defendants have elected to market their
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`services using a mark that is likely to cause consumer confusion with TransferWise’s products
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`and services.
`
`COUNT I
`
`(Infringement of Registered Trademarks Under 15 U.S.C. § 1114)
`
`23.
`
`TransferWise restates and incorporates by reference its previous allegations
`
`above, as if fully set forth herein.
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`24. Defendants’ unauthorized use of the mark WISELYTRANSFER is likely to cause
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`confusion, to cause mistake, and to deceive people into believing that Defendants’ services are
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`authorized by, related to, or associated with TransferWise. Therefore, Defendants’ unauthorized
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`use of the mark WISELYTRANSFER constitutes infringement of TransferWise’s Trademarks.
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`25.
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`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
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`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
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`5
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 6 of 11 PageID: 6
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`26. Defendants’ infringing acts aforementioned are willful, wanton, and in utter
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`disregard of TransferWise’s rights.
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`27.
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`TransferWise has no adequate remedy at law and is presently suffering and will
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`continue to suffer irreparable harm and damage to its business reputation and goodwill if such
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`infringing activities are allowed to continue.
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`COUNT II
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`(Trademark Infringement Under Common Law)
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`28.
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`TransferWise restates and incorporates by reference its previous allegations
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`above, as if fully set forth herein.
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`29. Defendants’ acts aforementioned constitute infringement of TransferWise’s
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`common law trademarks. TransferWise’s common law trademarks are reflected in the images
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`shown on registration certificates for TransferWise’s Trademarks.
`
`30.
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`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
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`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
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`31. Defendants’ wrongful acts aforementioned are willful, wanton, and in utter
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`disregard of TransferWise’s rights.
`
`32.
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`TransferWise has no adequate remedy at law and is presently suffering and will
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`continue to suffer irreparable harm and damage to its business reputation and goodwill if such
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`infringing activities are allowed to continue.
`
`COUNT III
`
`(Trademark Infringement Under 15 U.S.C. § 1125(a))
`
`33.
`
`TransferWise restates and incorporates by reference its previous allegations above,
`
`as if fully set forth herein.
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`6
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 7 of 11 PageID: 7
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`34. Defendants’ acts aforementioned constitute infringement of TransferWise’s
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`trademarks. TransferWise’s trademarks are reflected in the images shown on registration
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`certificates for TransferWise’s Trademarks.
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`35.
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`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
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`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
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`36. Defendants’ wrongful acts aforementioned are willful, wanton, and in utter
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`disregard of TransferWise’s rights.
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`37.
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`TransferWise has no adequate remedy at law and is presently suffering and will
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`continue to suffer irreparable harm and damage to its business reputation and goodwill if such
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`infringing activities are allowed to continue.
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`COUNT IV
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`(Unfair Competition Under N.J.S.A. § 56:4-1)
`
`38.
`
`TransferWise restates and incorporates by reference its previous allegations above,
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`as if fully set forth herein.
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`39.
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`The aforesaid wrongful acts of Defendants constitute unfair trade practices,
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`inequitable conduct and unfair competition.
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`40.
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`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
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`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
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`41. Defendants’ wrongful acts aforementioned are willful, wanton, and in utter
`
`disregard of TransferWise’s rights.
`
`42.
`
`TransferWise has no adequate remedy at law and is presently suffering and will
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`continue to suffer irreparable harm and damage to its business reputation and goodwill if such
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`infringing activities are allowed to continue.
`
`7
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 8 of 11 PageID: 8
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`COUNT V
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`(Unfair Competition Under 15 U.S.C. § 1125(a))
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`43.
`
`TransferWise restates and incorporates by reference its previous allegations
`
`above, as if fully set forth herein.
`
`44.
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`The aforesaid wrongful acts of Defendants constitute unfair trade practices,
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`inequitable conduct and unfair competition.
`
`45.
`
`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
`
`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
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`46. Defendants’ wrongful acts aforementioned are willful, wanton, and in utter
`
`disregard of TransferWise’s rights.
`
`47.
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`TransferWise has no adequate remedy at law and is presently suffering and will
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`continue to suffer irreparable harm and damage to its business reputation and goodwill if such
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`infringing activities are allowed to continue.
`
`COUNT VI
`
`(Trademark Dilution Under 15 U.S.C. § 1125(c))
`
`48.
`
`TransferWise restates and incorporates by reference its previous allegations above,
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`as if fully set forth herein.
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`49.
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`TransferWise’s Trademarks are widely recognized by the general consuming
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`public of the United States as a designation of source of TransferWise’s goods and services.
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`50. Defendants’ acts aforementioned are likely to cause dilution by blurring of
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`TransferWise’s Trademarks.
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`51.
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`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
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`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
`
`8
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 9 of 11 PageID: 9
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`52. Defendants’ wrongful acts aforementioned are willful, wanton, and in utter
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`disregard of TransferWise’s rights. TransferWise has no adequate remedy at law and is presently
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`suffering and will continue to suffer irreparable harm and damage to its business reputation and
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`goodwill if such infringing activities are allowed to continue.
`
`COUNT VII
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`(Trademark Dilution Under N.J.S.A. § 56:3-13.20)
`
`53.
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`TransferWise restates and incorporates by reference its previous allegations above,
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`as if fully set forth herein.
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`54.
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`TransferWise’s Trademarks are widely recognized by the general consuming
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`public of the United States as a designation of source of TransferWise’s goods and services.
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`55. Defendants’ acts aforementioned are likely to cause dilution by blurring of
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`TransferWise’s Trademarks.
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`56.
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`By reason of Defendants’ wrongful acts aforementioned, TransferWise has suffered
`
`and will continue to suffer monetary damages, the full extent of which is as yet undetermined.
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`57. Defendants’ wrongful acts aforementioned are willful, wanton, and in utter
`
`disregard of TransferWise’s rights. TransferWise has no adequate remedy at law and is presently
`
`suffering and will continue to suffer irreparable harm and damage to its business reputation and
`
`goodwill if such infringing activities are allowed to continue.
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`PRAYER FOR RELIEF
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`WHEREFORE, TransferWise respectfully requests the following relief:
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`A. A judgment and declaration that Defendants have infringed TransferWise’s
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`Trademarks under 15 U.S.C. § 1114, infringed TransferWise’s trademark rights under common
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`law and 15 U.S.C. § 1125(a), engaged in unfair competition under N.J.S.A. § 56:4-1 and 15
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`9
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 10 of 11 PageID: 10
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`U.S.C. § 1125(a); and are liable for trademark dilution under 15 U.S.C. § 1125(c) and N.J.S.A. §
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`56:3-13.20;
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`B. A permanent injunction enjoining and restraining Defendants, their officers,
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`agents, servants, employees, assigns, attorneys, and those in active concert or participation
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`therewith, from infringing, in any manner, TransferWise’s Trademarks; from infringing
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`TransferWise’s trademark rights, from engaging in acts of unfair competition against
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`TransferWise; and from engaging in activity that is likely to cause dilution of TransferWise’s
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`Trademarks;
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`C. An order requiring Defendants to abandon intent-to-use Application Serial
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`Number 88/150,941;
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`D. An order requiring that Defendants assign to Plaintiff
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`https://www.wiselytransfer.com and https://www.wiselywire.com;
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`E. An accounting to TransferWise for all sales, receipts, assets, profits or other gains
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`derived directly or indirectly from Defendants’ unlawful activity;
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`F. An award of damages as TransferWise has sustained, is sustaining, or will sustain
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`by reason of Defendants’ unlawful activity;
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`G. An award of punitive and exemplary damages in an amount to be determined;
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`H. An award of treble damages and an award of Defendants’ profits under 15 U.S.C.
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`§ 1117;
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`expenses;
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`I. An award of attorney fees under 15 U.S.C. § 1117 and related nontaxable
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`J. An award of pre- and post-judgment interest;
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`K. Taxable costs under 28 U.S.C. § 1920; and
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`10
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1 Filed 11/23/20 Page 11 of 11 PageID: 11
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`L. Other and further relief as this Court deems just and proper.
`
`Dated: November 23, 2020
`
`/s/ Ben Natter
`Ben Natter
`Jonathan A. Herstoff (pro hac vice admission pending)
`Camille Y. Turner
`HAUG PARTNERS LLP
`745 Fifth Avenue, 10th Floor
`New York, NY 10151
`Tel: (212) 588-0800
`Email: bnatter@haugpartners.com
`Email: jherstoff@haugpartners.com
`Email: cturner@haugpartners.com
`Attorneys for Plaintiff
`
`/s/ Patrick A. Florentino
`Patrick A. Florentino, Esq.
`COUGHLIN DUFFY LLP
`350 Mount Kemble Avenue
`P.O. Box 1917
`Morristown, New Jersey 07962
`Tel: (973) 267-0058
`Email: pflorentino@coughlinduffy.com
`Attorneys for Plaintiff
`
`11
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`

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`Case 2:20-cv-16903-JXN-LDW Document1-1 Filed 11/23/20 Page 1 of 3 PagelD: 12
`Case 2:20-cv-16903-JXN-LDW Document 1-1 Filed 11/23/20 Page 1 of 3 PageID: 12
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 2:20-cv-16903-JXN-LDW Document 1-1 Filed 11/23/20 Page 2 of 3 PageID: 13
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`1lrransferWise
`
`Reg. No. 6,017,793
`Registered Mar. 24, 2020
`Int. Cl.: 9
`Trademark
`Principal Register
`
`Transferwise Ltd. (UNITED KINGDOM limited company (ltd.) )
`6th Floor, Tea Building
`56 Shoreditch High Street
`London, UNITED KINGDOM E16JJ
`
`CLASS 9: Downloadable computer software platforms for banking and facilitating foreign
`currency payments; Magnetically encoded debit cards
`
`FIRST USE 2-00-2015; IN COMMERCE 2-00-2015
`
`The mark consists of the term "TransferWise". To the left of "TransferWise" is a stylized flag.
`
`OWNER OF U.S. REG. NO. 4971081, 5730545
`
`SER. NO. 88-586,071, FILED 08-20-2019
`
`Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1-1 Filed 11/23/20 Page 3 of 3 PageID: 14
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`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`•
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`years after the registration date.
` See 15 U.S.C. §§1058, 1141k.
` If the declaration is accepted, the
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`•
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`•
`
` and an Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date). The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
`date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
`international registration, see http://www.wipo.int/madrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information.
` With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 6017793
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document1-2 Filed 11/23/20 Page 1 of 3 PagelD: 15
`Case 2:20-cv-16903-JXN-LDW Document 1-2 Filed 11/23/20 Page 1 of 3 PageID: 15
`
`EXHIBIT B
`EXHIBIT B
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1-2 Filed 11/23/20 Page 2 of 3 PageID: 16
`
`TRANSFER WISE
`
`Reg. No. 6,017,791
`Registered Mar. 24, 2020
`Int. Cl.: 9, 36
`Service Mark
`Trademark
`Principal Register
`
`Transferwise Ltd. (UNITED KINGDOM limited company (ltd.) )
`6th Floor, Tea Building
`56 Shoreditch High Street
`London, UNITED KINGDOM E16JJ
`
`CLASS 9: Downloadable computer software platforms for banking and facilitating foreign
`currency payments; Magnetically encoded debit cards
`
`FIRST USE 2-00-2015; IN COMMERCE 2-00-2015
`
`CLASS 36: Banking services; Credit bureau services; Debit account services featuring
`software applications and physical debit cards; Debit card transaction processing services;
`Financial advice; Financial analysis and research services; Financial credit scoring services;
`Financial services, namely, providing for the exchange of foreign currency, commodities,
`financial derivatives, interest rate products, and equities via the internet and intranet systems;
`Payment processing services in the field of bill payments; Providing electronic processing of
`electronic funds transfer, ACH, credit card, debit card, electronic check and electronic
`payments; Providing financial information
`
`FIRST USE 2-00-2015; IN COMMERCE 2-00-2015
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 4490425, 4971081, 5730545
`
`SER. NO. 88-586,058, FILED 08-20-2019
`
`Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1-2 Filed 11/23/20 Page 3 of 3 PageID: 17
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`•
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`years after the registration date.
` See 15 U.S.C. §§1058, 1141k.
` If the declaration is accepted, the
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`•
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`•
`
` and an Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date). The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
`date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
`international registration, see http://www.wipo.int/madrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information.
` With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 6017791
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1-3 Filed 11/23/20 Page 1 of 3 PagelD: 18
`Case 2:20-cv-16903-JXN-LDW Document 1-3 Filed 11/23/20 Page 1 of 3 PageID: 18
`
`EXHIBIT C
`EXHIBIT C
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1-3 Filed 11/23/20 Page 2 of 3 PageID: 19
`
`1lrransferWise
`
`Reg. No. 4,971,081
`
`TRANSFERWISE LTD (ENGLAND REGISTERED COMPANY)
`2NDFLOOR 186-188 CITY ROAD
`Registered June 7, 2016 LONDON Ec1v 2NT
`UNITED KINGDOM
`
`Int. Cl.: 36
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: FINANCIAL SERVICES, NAMELY, FOREIGN CURRENCY EXCHANGE, CURRENCY
`TRANSFER SERVICES; ELECTRONIC MONEY TRANSFERS; FINANCIAL TRANSACTIONS
`RELATING TO ALL OF THE AFORESAID; PROVISION OF INFORMATION AND SERVICES
`RELATING TO THE AFORESAID, IN CLASS 36 (U.S. CLS. 100, 101 AND 102).
`
`THE MARK CONSISTS OF THE TERM "TRANSFERWISE" IN DARK BLUE WITH THE "T"
`AND "W" IN UPPER CASE LETTERS AND THE REMAINING LETTERS IN LOWER CASE.
`TO THE LEFT OF THE WORDING IS A FLAG LOGO IN LIGHT BLUE.
`
`PRIORITY DATE OF 3-4-2015 IS CLAIMED.
`
`OWNER OF INTERNATIONAL REGISTRATION 1264350 DATED 6-30-2015 , EXPIRES 6-30-
`2025.
`
`THE COLOR(S) LIGHT BLUE AND DARK BLUE IS/ARE CLAIMED AS A FEATURE OF
`THE MARK.
`
`TRANSFERWISE IN DARK BLUE AND THE FLAG LOGO IN LIGHT BLUE.
`
`SER. NO. 79-172,274, FILED 6-30-2015.
`
`illSTIN SEVERSON, EXAMINING ATTORNEY
`
`Director of the United States
`Patent and Trademark Office
`
`

`

`Case 2:20-cv-16903-JXN-LDW Document 1-3 Filed 11/23/20 Page 3 of 3 PageID: 20
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date . See 15 U.S.C. §§ 1058, 114 lk. If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an
`Application for Renewal between the 9th and 10th years after the registration date .*
`See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration ofU se ( or Excusable Nonuse) and an Application for Renewal between
`every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed w ithin six months after the deadlines listed above
`with the payment of an additional fee .
`
`* ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office
`(USPTO) . The time periods for filing are based on the U.S. registration date (not the international registration
`date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to
`those for nationally issued registrations. See 15 U.S.C. §§ 1058, 1141k. However, owners of international
`registrations do not file renewal applications at the USPTO. Instead, the holder