`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`OWNER SECTION (current)
`
`NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`The table below presents the data as entered.
`
`Entered
`
`88515426
`
`LAW OFFICE 117
`
`https://tmng-al.uspto.gov/resting2/api/img/88515426/large
`
`CASH
`
`NO
`
`NO
`
`Apple Inc.
`
`One Apple Park Way
`
`Cupertino
`
`California
`
`95014
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`OWNER SECTION (proposed)
`
`NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`Apple Inc.
`
`One Apple Park Way
`
`Cupertino
`
`California
`
`95014
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`
`appletrademarks@apple.com
`
`GOODS AND/OR SERVICES SECTION (009) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`downloadable and recorded computer software for the storage, transmission, verification, and authentication of credit and debit card and other
`payment and transaction information; downloadable and recorded computer software used in electronic funds storage, transfer and payment
`transaction processing
`
`FILING BASIS
`
`FILING BASIS
`
` FOREIGN APPLICATION NUMBER
`
` FOREIGN APPLICATION
`
`Section 1(b)
`
`Section 44(d)
`
`2019-039
`
`Liechtenstein
`
`
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
` FOREIGN FILING DATE
`
`01/15/2019
`
`GOODS AND/OR SERVICES SECTION (009) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`downloadable and recorded computer software for the storage, transmission, verification, and authentication of credit and debit card and other
`payment and transaction information; downloadable and recorded computer software used in electronic funds storage, transfer and payment
`transaction processing
`
`FILING BASIS
`
`FILING BASIS
`
` FOREIGN APPLICATION NUMBER
`
` FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
` FOREIGN FILING DATE
`
` INTENT TO
` PERFECT 44(d)
`
`Section 1(b)
`
`Section 44(d)
`
`2019-039
`
`Liechtenstein
`
`01/15/2019
`
`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. The application should not be suspended to
`await the submission of the foreign registration.
`
`GOODS AND/OR SERVICES SECTION (036) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`036
`
`Financial services; financial transaction services; financial information; providing secure commercial transactions; electronic funds transfer
`and payment services; stored value card payment authorization, verification, and transaction processing services
`
`FILING BASIS
`
`FILING BASIS
`
` FOREIGN APPLICATION NUMBER
`
` FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
` FOREIGN FILING DATE
`
`Section 1(b)
`
`Section 44(d)
`
`2019-039
`
`Liechtenstein
`
`01/15/2019
`
`GOODS AND/OR SERVICES SECTION (036) (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`036
`
`Financial services; Financial services, namely, providing peer-to-peer money transfer services via wireless digital messaging, mobile electronic
`devices, and global computer networks; financial transaction services; financial services, namely, providing cash for credit card use as part of a
`customer loyalty program; financial transaction services, namely, providing secure payment and transfer options and permitting account
`holders to make payments from a stored value card; financial transaction services, namely, enabling consumers to perform electronic payment
`transactions through the use of wireless digital messaging, mobile electronic devices, and global computer networks; financial transaction
`services, namely, processing cash rewards for use with credit cards, debit cards, and stored value cards as part of a customer loyalty program;
`financial information; providing secure commercial transactions; electronic funds transfer and payment services; stored value card payment
`authorization, verification, and transaction processing services
`
`FINAL DESCRIPTION
`
`Financial services, namely, providing peer-to-peer money transfer services via wireless digital messaging, mobile electronic devices, and
`global computer networks; financial services, namely, providing cash for credit card use as part of a customer loyalty program; financial
`transaction services, namely, providing secure payment and transfer options and permitting account holders to make payments from a stored
`value card; financial transaction services, namely, enabling consumers to perform electronic payment transactions through the use of wireless
`digital messaging, mobile electronic devices, and global computer networks; financial transaction services, namely, processing cash rewards
`
`
`
`for use with credit cards, debit cards, and stored value cards as part of a customer loyalty program; financial information; providing secure
`commercial transactions; electronic funds transfer and payment services; stored value card payment authorization, verification, and transaction
`processing services
`
`FILING BASIS
`
`FILING BASIS
`
` FOREIGN APPLICATION NUMBER
`
` FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
` FOREIGN FILING DATE
`
` INTENT TO
` PERFECT 44(d)
`
`Section 1(b)
`
`Section 44(d)
`
`2019-039
`
`Liechtenstein
`
`01/15/2019
`
`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. The application should not be suspended to
`await the submission of the foreign registration.
`
`ATTORNEY INFORMATION (current)
`
`NAME
`
`Thomas R. La Perle
`
`ATTORNEY BAR MEMBERSHIP NUMBER
`
`YEAR OF ADMISSION
`
`U.S. STATE/ COMMONWEALTH/ TERRITORY
`
`FIRM NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`NOT SPECIFIED
`
`NOT SPECIFIED
`
`NOT SPECIFIED
`
`APPLE INC.
`
`MS: 169-3IPL
`
`ONE APPLE PARK WAY
`
`CUPERTINO
`
`California
`
`95014
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`
`trademarkdocket@apple.com
`
`ATTORNEY INFORMATION (proposed)
`
`NAME
`
`Thomas R. La Perle
`
`ATTORNEY BAR MEMBERSHIP NUMBER
`
`YEAR OF ADMISSION
`
`U.S. STATE/ COMMONWEALTH/ TERRITORY
`
`FIRM NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`XXX
`
`XXXX
`
`XX
`
`APPLE INC.
`
`MS: 169-3IPL
`
`ONE APPLE PARK WAY
`
`CUPERTINO
`
`California
`
`95014
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`
`trademarkdocket@apple.com
`
`OTHER APPOINTED ATTORNEY
`
`All other attorneys in the Trademark Law Department
`
`
`
`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`THOMAS R. LA PERLE
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`trademarkdocket@apple.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`laperle@apple.com
`
`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`Thomas R. La Perle
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`trademarkdocket@apple.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`laperle@apple.com; karenmarie@apple.com; amy.shelton@apple.com
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/Karen Marie Kitterman/
`
`Karen Marie Kitterman
`
`Attorney of Record, California Bar member
`
`(669) 227-7171
`
`03/09/2020
`
`YES
`
`Mon Mar 09 23:42:08 ET 2020
`
`USPTO/ROA-XXXX:XXX:XXXX:X
`XXX:XXXX:XXXX:XXX:XXXX-20
`200309234208274806-885154
`26-710ecbdb6a1e4bf255c754
`ce81deef2a20b27dc94d73f89
`8d72a290338ce2874-N/A-N/A
`-20200309233545634862
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 88515426 CASH (Stylized and/or with Design, see https://tmng-al.uspto.gov/resting2/api/img/88515426/large) has been
`amended as follows:
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following:
`Current: Class 009 for downloadable and recorded computer software for the storage, transmission, verification, and authentication of credit and
`debit card and other payment and transaction information; downloadable and recorded computer software used in electronic funds storage,
`transfer and payment transaction processing
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`
`
`
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`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[ Liechtenstein application number
`2019-039 filed 01/15/2019]. 15 U.S.C.Section 1126(d), as amended.
`
`Proposed: Class 009 for downloadable and recorded computer software for the storage, transmission, verification, and authentication of credit
`and debit card and other payment and transaction information; downloadable and recorded computer software used in electronic funds storage,
`transfer and payment transaction processing
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`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 [ Liechtenstein application
`number 2019-039 filed 01/15/2019]. 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. The application should not be suspended to
`await the submission of the foreign registration.
`
`Applicant proposes to amend the following:
`Current: Class 036 for Financial services; financial transaction services; financial information; providing secure commercial transactions;
`electronic funds transfer and payment services; stored value card payment authorization, verification, and transaction processing services
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`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[ Liechtenstein application number
`2019-039 filed 01/15/2019]. 15 U.S.C.Section 1126(d), as amended.
`
`Proposed:
`Tracked Text Description: Financial services; Financial services, namely, providing peer-to-peer money transfer services via wireless digital
`messaging, mobile electronic devices, and global computer networks; financial transaction services; financial services, namely, providing cash
`for credit card use as part of a customer loyalty program; financial transaction services, namely, providing secure payment and transfer options
`and permitting account holders to make payments from a stored value card; financial transaction services, namely, enabling consumers to
`perform electronic payment transactions through the use of wireless digital messaging, mobile electronic devices, and global computer networks;
`financial transaction services, namely, processing cash rewards for use with credit cards, debit cards, and stored value cards as part of a customer
`loyalty program; financial information; providing secure commercial transactions; electronic funds transfer and payment services; stored value
`card payment authorization, verification, and transaction processing services
`
`Class 036 for Financial services, namely, providing peer-to-peer money transfer services via wireless digital messaging, mobile electronic
`devices, and global computer networks; financial services, namely, providing cash for credit card use as part of a customer loyalty program;
`financial transaction services, namely, providing secure payment and transfer options and permitting account holders to make payments from a
`stored value card; financial transaction services, namely, enabling consumers to perform electronic payment transactions through the use of
`wireless digital messaging, mobile electronic devices, and global computer networks; financial transaction services, namely, processing cash
`rewards for use with credit cards, debit cards, and stored value cards as part of a customer loyalty program; financial information; providing
`secure commercial transactions; electronic funds transfer and payment services; stored value card payment authorization, verification, and
`transaction processing services
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`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 [ Liechtenstein application
`number 2019-039 filed 01/15/2019]. 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. The application should not be suspended to
`await the submission of the foreign registration.
`
`OWNER AND/OR ENTITY INFORMATION
`Applicant proposes to amend the following:
`Current: Apple Inc., a corporation of California, having an address of
` One Apple Park Way
` Cupertino, California 95014
` United States
`
`Proposed: Apple Inc., a corporation of California, having an address of
` One Apple Park Way
` Cupertino, California 95014
` United States
`
`
`
` Email Address: appletrademarks@apple.com
`
`The owner's/holder's current attorney information: Thomas R. La Perle. Thomas R. La Perle of APPLE INC., is located at
`
` MS: 169-3IPL
` ONE APPLE PARK WAY
` CUPERTINO, California 95014
` United States
` The email address is trademarkdocket@apple.com
`
`The owner's/holder's proposed attorney information: Thomas R. La Perle. Other appointed attorneys are All other attorneys in the Trademark
`Law Department. Thomas R. La Perle of APPLE INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and
`the attorney(s) is located at
`
` MS: 169-3IPL
` ONE APPLE PARK WAY
` CUPERTINO, California 95014
` United States
` The email address is trademarkdocket@apple.com
`
`Thomas R. La Perle submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest
`court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
`
`Correspondence Information (current):
` THOMAS R. LA PERLE
` PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@apple.com
` SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): laperle@apple.com
`
`Correspondence Information (proposed):
` Thomas R. La Perle
` PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@apple.com
` SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): laperle@apple.com; karenmarie@apple.com; amy.shelton@apple.com
`
`Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the
`owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic
`Application System (TEAS).
`
`SIGNATURE(S)
`Response Signature
`Signature: /Karen Marie Kitterman/ Date: 03/09/2020
`Signatory's Name: Karen Marie Kitterman
`Signatory's Position: Attorney of Record, California Bar member
`
`Signatory's Phone Number: (669) 227-7171
`
`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: THOMAS R. LA PERLE
` APPLE INC.
` MS: 169-3IPL
` ONE APPLE PARK WAY
` CUPERTINO, California 95014
`Mailing Address: Thomas R. La Perle
` APPLE INC.
` MS: 169-3IPL
`
`
`
` ONE APPLE PARK WAY
` CUPERTINO, California 95014
`
`Serial Number: 88515426
`Internet Transmission Date: Mon Mar 09 23:42:08 ET 2020
`TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
`XX:XXXX-20200309234208274806-88515426-71
`0ecbdb6a1e4bf255c754ce81deef2a20b27dc94d
`73f898d72a290338ce2874-N/A-N/A-202003092
`33545634862
`
`
`
`

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