| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76487960 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| The examining attorey has cited prior pending application (Serial No. 76/330,217) for the mark DECIDE WITH CONFIDENCE. Applicant in a telephone conference of January 30, 2004 discussed this potential refusal with the examining attorney. Based on the arguments relating to the differences in the commercial impressions between the cited mark and Applicant's mark CONFIDENCE and other presence of other third party marks, the examining attorney has agreed to withdraw the reference. Specifically, the following marks co-exist on the register for related Class 035 services thereby making the term "confidence" weak: 1. SPEAK WITH CONFIDENCE (U.S. REG. NO. 2800509) - Class 035 Business consulting services. 2. COMMUNICATE WITH CONFIDENCE (U.S. REG. NO. 2618373) - Class 035 Business consulting services. 3. COACHING WITH CONFIDENCE (U.S. REG. NO. 2610721) - Class 035 Business management consulting services. 4. THE CORNERSTONE OF CONFIDENCE (U.S. APPL. SERIAL NO. 76/459,069) - Class 035 Business management consulting services - Approved for Publication. 5. COLOR CONFIDENCE (U.S. APPL. SERIAL NO. 76/461,719) - Class 035 - Business consulting services - Approved for Publication. 6. CONFIDENCE INC. (WITH & WITHOUT DESIGN) (U.S. REG. NOS. 1775419 & 1775420) - Class 035 business consulting services. Therefore, as discussed, Applicant respectfully requests that the citation be withdrawn. | |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| CONDUCTING ONLINE BUSINESS AND MARKET RESEARCH SURVEYS; CONSULTATION SERVICES IN THE FIELD OF MARKETING | |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(d) |
| FOREIGN APPLICATION NUMBER | 1148947 |
| FOREIGN APPLICATION COUNTRY NAME | CA |
| FOREIGN FILING DATE | 08/06/2002 |
| FOREIGN REGISTRATION COUNTRY NAME | CA |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| CONDUCTING ONLINE BUSINESS AND MARKET RESEARCH SURVEYS; CONSULTATION SERVICES IN THE FIELD OF BUSINESS MARKETING | |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(d) |
| FOREIGN APPLICATION NUMBER | 1148947 |
| FOREIGN APPLICATION COUNTRY NAME | CA |
| FOREIGN FILING DATE | 08/06/2002 |
| FOREIGN REGISTRATION COUNTRY NAME | CA |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Applicant would like to retain the Section 1(b) and Section 44(d) filing bases and requests that the examining attorney suspend the application pending receipt of a copy of the Canadian registration certificate. |
| SIGNATURE SECTION | |
| SIGNATURE | /jas/ |
| SIGNATORY NAME | Jeffrey A. Smith |
| SIGNATORY POSITION | Applicant's Attorney |
| SIGNATORY DATE | 01/30/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jan 30 17:50:16 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXXX-2004 0130175016447116-76487960 -200105cbfeabc7710baa2abd 4b1328d2c97-N-N-200401301 74942841576 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76487960 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| The examining attorey has cited prior pending application (Serial No. 76/330,217) for the mark DECIDE WITH CONFIDENCE. Applicant in a telephone conference of January 30, 2004 discussed this potential refusal with the examining attorney. Based on the arguments relating to the differences in the commercial impressions between the cited mark and Applicant's mark CONFIDENCE and other presence of other third party marks, the examining attorney has agreed to withdraw the reference. Specifically, the following marks co-exist on the register for related Class 035 services thereby making the term "confidence" weak: 1. SPEAK WITH CONFIDENCE (U.S. REG. NO. 2800509) - Class 035 Business consulting services. 2. COMMUNICATE WITH CONFIDENCE (U.S. REG. NO. 2618373) - Class 035 Business consulting services. 3. COACHING WITH CONFIDENCE (U.S. REG. NO. 2610721) - Class 035 Business management consulting services. 4. THE CORNERSTONE OF CONFIDENCE (U.S. APPL. SERIAL NO. 76/459,069) - Class 035 Business management consulting services - Approved for Publication. 5. COLOR CONFIDENCE (U.S. APPL. SERIAL NO. 76/461,719) - Class 035 - Business consulting services - Approved for Publication. 6. CONFIDENCE INC. (WITH & WITHOUT DESIGN) (U.S. REG. NOS. 1775419 & 1775420) - Class 035 business consulting services. Therefore, as discussed, Applicant respectfully requests that the citation be withdrawn. | |
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 035 for CONDUCTING ONLINE BUSINESS AND MARKET RESEARCH SURVEYS; CONSULTATION SERVICES IN THE FIELD OF MARKETING | |
| Original Filing Basis: 1(b); and/or 44(d). | |
| Proposed: Class 035 for CONDUCTING ONLINE BUSINESS AND MARKET RESEARCH SURVEYS; CONSULTATION SERVICES IN THE FIELD OF BUSINESS MARKETING | |
| Additional Statements | |
| Applicant would like to retain the Section 1(b) and Section 44(d) filing bases and requests that the examining attorney suspend the application pending receipt of a copy of the Canadian registration certificate. | |
| Response Signature | |
| Signature: /jas/ Date: 01/30/2004 | |
| Signatory's Name: Jeffrey A. Smith | |
| Signatory's Position: Applicant's Attorney | |
| Serial Number: 76487960 | |
| Internet Transmission Date: Fri Jan 30 17:50:16 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2004013017501644711 6-76487960-200105cbfeabc7710baa2abd4b132 8d2c97-N-N-20040130174942841576 |