| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76573533 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Office Actions dated March 26 and March 29, 2004, which issued in connection with the above-referenced service mark application, have been received, and the following is in response thereto. Applicant's attorney wishes to thank the Trademark Examining Attorney for the careful consideration given this case. Applicant has carefully reviewed the outstanding Office Actions and based upon the statements, amendments and remarks herein, respectfully requests that the Examiner pass the subject application for registration of the referenced mark on the Principal Register. As required, amendment has been made to the recitation of services to now include International Classes 35 and 41 as well as International Class 42. The goods listed in International Class 16 have not been changed and remain in the application. The dates of first use and first use in commerce of the mark has been set forth for all of the International Classes herein. A statement to this effect is included in the attached Declaration Under 37 CFR 2.20. The specimens submitted at the time of filing show use of the mark in connection with the goods in International Class 16 as well as in International Classes 35, 41 and 42. A statement to this effect is included in the attached Declaration Under 37 CFR 2.20. For the record, the date of signature on the application was merely written incorrectly. The application was signed January 27, 2004 (not 2003). However, to expedite prosecution, a statement has been made in the attached Declaration Under 37 CFR 2.20 that the mark is still in use in commerce. Finally, as required, a proper statement has been made concerning the lining shown in the mark. Based on the foregoing, Applicant now believes it has completely responded to each of the issues raised in the outstanding Office Actions dated March 26 and March 29, 2004, and respectfully requests that the Trademark Examining Attorney indicate the registrability of the referenced mark on the Principal Register and pass the application for publication for opposition in accordance with Section 12(a) of the Trademark Act. |
|
| GOODS AND/OR SERVICES SECTION (1st class)(current) | |
| INTERNATIONAL CLASS | 016 |
| DESCRIPTION | |
| PRINTED PUBLICATIONS, NAMELY, INSTRUCTIONAL MANUALS, BOOKS, ARTICLES, REPORTS AND PRINTED GUIDELINES CONCERNING ORGANIZATIONAL DEVELOPMENT AND DESIGN CAPABILITIES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 00/00/1985 |
| FIRST USE IN COMMERCE DATE | 00/00/1985 |
| GOODS AND/OR SERVICES SECTION (1st class)(proposed) | |
| INTERNATIONAL CLASS | 016 |
| DESCRIPTION | |
| PRINTED PUBLICATIONS, NAMELY, INSTRUCTIONAL MANUALS, BOOKS, ARTICLES, REPORTS AND PRINTED GUIDELINES CONCERNING ORGANIZATIONAL DEVELOPMENT AND DESIGN CAPABILITIES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 00/00/1985 |
| FIRST USE IN COMMERCE DATE | 00/00/1985 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\ticrs\EXPORT11\IMAGEOUT 11\765\735\76573533\xml1\ ROA0002.JPG |
| SPECIMEN DESCRIPTION | The specimen submitted at the time of filing was intended to be a specimen showing use for the International Class 16 goods. |
| GOODS AND/OR SERVICES SECTION (2nd class)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| COMPUTER CONSULTATION SERVICES, NAMELY PROVIDING ASSESSMENT SERVICES TO BUSINESSES AND GOVERNMENTAL AGENCIES AND UNITS TO DETERMINE THEIR COMPUTER DEVELOPMENT AND DESIGN CAPABILITIES; BUSINESS APPRAISAL CONSULTING SERVICES, NAMELY, PROVIDING TRAINING IN PROCESS APPRAISAL TO ORGANIZATIONS ENGAGED IN THE ACQUISITION OR PRODUCTION OF PRODUCTS AND SERVICES, | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 00/00/1985 |
| FIRST USE IN COMMERCE DATE | 00/00/1985 |
| GOODS AND/OR SERVICES SECTION (2nd class)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| COMPUTER CONSULTATION SERVICES, NAMELY PROVIDING ASSESSMENT SERVICES TO BUSINESSES AND GOVERNMENTAL AGENCIES AND UNITS TO DETERMINE THEIR COMPUTER DEVELOPMENT AND DESIGN CAPABILITIES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 00/00/1985 |
| FIRST USE IN COMMERCE DATE | 00/00/1985 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\ticrs\EXPORT11\IMAGEOUT 11\765\735\76573533\xml1\ ROA0003.JPG |
| SPECIMEN DESCRIPTION | The specimen submitted at the time of filing shows use of the mark in connection with the International Class 42 services. |
| GOODS AND/OR SERVICES SECTION (3rd class)(class added) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| BUSINESS APPRAISAL CONSULTING SERVICES IN PROCESS APPRAISAL TO ORGANIZATIONS ENGAGED IN THE ACQUISITION OR PRODUCTION OF PRODUCTS AND SERVICES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 00/00/1985 |
| FIRST USE IN COMMERCE DATE | 00/00/1985 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\ticrs\EXPORT11\IMAGEOUT 11\765\735\76573533\xml1\ ROA0004.JPG |
| SPECIMEN DESCRIPTION | The specimen submitted at the time of filing shows use of the mark in connection with the International Class 35 services. |
| GOODS AND/OR SERVICES SECTION (4th class)(class added) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| PROVIDING TRAINING IN PROCESS APPRAISAL TO ORGANIZATIONS ENGAGED IN THE ACQUISITION OR PRODUCTION OF PRODUCTS AND SERVICES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 00/00/1985 |
| FIRST USE IN COMMERCE DATE | 00/00/1985 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\ticrs\EXPORT11\IMAGEOUT 11\765\735\76573533\xml1\ ROA0005.JPG |
| SPECIMEN DESCRIPTION | The specimen submitted at the time of filing shows use of the mark in connection with the International Class 41 services. |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The lining in the drawing of the mark is a feature of the mark. The mark is still in use in commerce. |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 2 |
| SUBTOTAL AMOUNT | 670 |
| TOTAL AMOUNT | 670 |
| SIGNATURE SECTION | |
| SIGNATURE | /Sally Cunningham/ |
| SIGNATORY NAME | Sally Cunningham |
| SIGNATORY POSITION | SEI Counsel |
| SIGNATORY DATE | 09/24/2004 |
| SIGNATURE | /Charles H. Dougherty, Jr./ |
| SIGNATORY NAME | Charles H. Dougherty, Jr. |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATORY DATE | 09/24/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Sep 24 10:24:41 EDT 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXX-20040 924102441502028-76573533- 2003ee86be672f2864bb25c54 640bed82bCC816-2004092312 5544968457 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76573533 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
The Office Actions dated March 26 and March 29, 2004, which issued in connection with the above-referenced service mark application, have been received, and the following is in response thereto. Applicant's attorney wishes to thank the Trademark Examining Attorney for the careful consideration given this case. Applicant has carefully reviewed the outstanding Office Actions and based upon the statements, amendments and remarks herein, respectfully requests that the Examiner pass the subject application for registration of the referenced mark on the Principal Register. As required, amendment has been made to the recitation of services to now include International Classes 35 and 41 as well as International Class 42. The goods listed in International Class 16 have not been changed and remain in the application. The dates of first use and first use in commerce of the mark has been set forth for all of the International Classes herein. A statement to this effect is included in the attached Declaration Under 37 CFR 2.20. The specimens submitted at the time of filing show use of the mark in connection with the goods in International Class 16 as well as in International Classes 35, 41 and 42. A statement to this effect is included in the attached Declaration Under 37 CFR 2.20. For the record, the date of signature on the application was merely written incorrectly. The application was signed January 27, 2004 (not 2003). However, to expedite prosecution, a statement has been made in the attached Declaration Under 37 CFR 2.20 that the mark is still in use in commerce. Finally, as required, a proper statement has been made concerning the lining shown in the mark. Based on the foregoing, Applicant now believes it has completely responded to each of the issues raised in the outstanding Office Actions dated March 26 and March 29, 2004, and respectfully requests that the Trademark Examining Attorney indicate the registrability of the referenced mark on the Principal Register and pass the application for publication for opposition in accordance with Section 12(a) of the Trademark Act. |
|
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 016 for PRINTED PUBLICATIONS, NAMELY, INSTRUCTIONAL MANUALS, BOOKS, ARTICLES, REPORTS AND PRINTED GUIDELINES CONCERNING ORGANIZATIONAL DEVELOPMENT AND DESIGN CAPABILITIES | |
| Original Filing Basis: 1(a). | |
| Proposed: Class 016 for PRINTED PUBLICATIONS, NAMELY, INSTRUCTIONAL MANUALS, BOOKS, ARTICLES, REPORTS AND PRINTED GUIDELINES CONCERNING ORGANIZATIONAL DEVELOPMENT AND DESIGN CAPABILITIES | |
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1985 and first used in commerce at least as early as 00/00/1985, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 016. | |
| The specimen(s) submitted consists of The specimen submitted at the time of filing was intended to be a specimen showing use for the International Class 16 goods.. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 042 for COMPUTER CONSULTATION SERVICES, NAMELY PROVIDING ASSESSMENT SERVICES TO BUSINESSES AND GOVERNMENTAL AGENCIES AND UNITS TO DETERMINE THEIR COMPUTER DEVELOPMENT AND DESIGN CAPABILITIES; BUSINESS APPRAISAL CONSULTING SERVICES, NAMELY, PROVIDING TRAINING IN PROCESS APPRAISAL TO ORGANIZATIONS ENGAGED IN THE ACQUISITION OR PRODUCTION OF PRODUCTS AND SERVICES, | |
| Original Filing Basis: 1(a). | |
| Proposed: Class 042 for COMPUTER CONSULTATION SERVICES, NAMELY PROVIDING ASSESSMENT SERVICES TO BUSINESSES AND GOVERNMENTAL AGENCIES AND UNITS TO DETERMINE THEIR COMPUTER DEVELOPMENT AND DESIGN CAPABILITIES | |
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/1985 and first used in commerce at least as early as 00/00/1985, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 042. | |
| The specimen(s) submitted consists of The specimen submitted at the time of filing shows use of the mark in connection with the International Class 42 services.. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Applicant hereby adds the following class of goods/services to the application: |
|
| New: Class 035 for BUSINESS APPRAISAL CONSULTING SERVICES IN PROCESS APPRAISAL TO ORGANIZATIONS ENGAGED IN THE ACQUISITION OR PRODUCTION OF PRODUCTS AND SERVICES |
|
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used on 00/00/1985 and first used in commerce on 00/00/1985, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 035. | |
| The specimen(s) submitted consists of The specimen submitted at the time of filing shows use of the mark in connection with the International Class 35 services.. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Applicant hereby adds the following class of goods/services to the application: |
|
| New: Class 041 for PROVIDING TRAINING IN PROCESS APPRAISAL TO ORGANIZATIONS ENGAGED IN THE ACQUISITION OR PRODUCTION OF PRODUCTS AND SERVICES |
|
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used on 00/00/1985 and first used in commerce on 00/00/1985, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 041. | |
| The specimen(s) submitted consists of The specimen submitted at the time of filing shows use of the mark in connection with the International Class 41 services.. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Additional Statements | |
| The lining in the drawing of the mark is a feature of the mark. The mark is still in use in commerce. | |
| Fees | |
| Additional fee(s) in the amount of $670 is being submitted. | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /Sally Cunningham/ Date: 09/24/2004 | |
| Signatory's Name: Sally Cunningham | |
| Signatory's Position: SEI Counsel | |
| Response Signature | |
| Signature: /Charles H. Dougherty, Jr./ Date: 09/24/2004 | |
| Signatory's Name: Charles H. Dougherty, Jr. | |
| Signatory's Position: Attorney for Applicant | |
| RAM Sale Number: 816 | |
| RAM Accounting Date: 09/24/2004 | |
| Serial Number: 76573533 | |
| Internet Transmission Date: Fri Sep 24 10:24:41 EDT 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXX-20040924102441502028 -76573533-2003ee86be672f2864bb25c54640be d82bCC816-20040923125544968457 |
