Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76715759 AWE COLLECTIVE(Standard Characters, see http://uspto.report/TM/76715759/mark.png) has been amended as follows:

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

Applicant addresses here 2 matters raised by the Examining Attorney:  the Section 2(d) refusal and the requirement of a disclaimer of the term COLLECTIVE.

First as to the 2(d) refusal, Examiner argues primarily that the marks are identical in part and that the parties offer identical and closely related business services.  As to the marks, Applicant's mark does share a term in common with the cited mark, but Applicant's mark includes additional text that is distinguishing. Applicant's mark includes the term COLLECTIVE which Applicant discusses below combines with the term AWE to create a distinctive marketing message to Applicant's intended targeted audience, that is to impart the message of a sense of wonder [AWE] that the work product of projects of Applicant will imbue to the totality of the targeted audience that encounters Applicant's work product.  hence the overall commercial impression of Applicant's mark is distinct from that of the cited mark.  It does not have the same appearance, is not pronounced the same, and does not have the same meaning,  It is perceived as a distinctive mark and is not confusingly similar to the cited mark. 

Further, as to the Examiner's argument that the parties offer identical and closely related business services, such is not the case.  The registrant offers association services and Applicant offers advertising, marketing and publicity services.   Registrant does not offer services provided by Applicant, and Applicant does not offer the services provided by registrant.   Also, notable, the recitation of services of the cited registration expressly states that the association services are restricted to those women entrepreneurs in Austin, Texas.  Accordingly, if necessary, it appears that Applicant can avoid any perceived conflict by expressily defining its channel of trade to exclude such class of individuals.  However, Applicant does not believe such an exclusion is necessary.   Further, it appears that registrant of the cited registration may have abandoned this mark, as the Section 8 & 9 maintenance actions became due on 6/16/14 and have yet to be filed.   If necessary, Applicant may in the future request a suspense of this application pending the deadline for the registrant to file its maintenance actions.

As to the second matter requiring argument, Examiner indicates Applicant must disclaim "Collective" apart from its mark, indicating that the term collective refers to a cooperative enterprise, and attaches a definition of the term collective.  Applicant respectfully rejects Examiner's position that Applicant is using the term to indicate a cooperative enterprise.   In fact, Applicant is an LLC as indicated in Applicant's name, and is not a collective enterprise.  Further the definition provided by the Examiner is one of many different definitions for the term collective.  For instance the Merriam Webster dictionary (m-w.com) provides one definition as formed by collecting.  Even the Oxford Dictionaries cited by the Examiner offers different definitions, such as taken as a whole.

Applicant is not using the term to indicate A cooperative enterprise.  Rather the juxtaposition of the term AWE with COLLECTIVE is to impart the message of a since of wonder [AWE] that the work product of projects of Applicant will imbue to the totality of the targeted audience that encounters Applicant's work product.   Accordingly, Applicant respectfully rejects the position that Applicant is required to disclaim the term COLLECTIVE. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising, marketing, and publicity services, namely, promoting goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium; Creating corporate and brand identity for others; Advertising consultancy; Development of marketing strategies and concepts, conducting market research and surveys; Preparation and realization of media and advertising plans and concepts; Management of advertising accounts; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business consultation and management regarding marketing activities and launching of new products; Public relations; Public relations services, reputation management services, consulting services relating to publicity developing and management of promotional campaigns for businesses; Arranging and conducting special events for business purposes, event planning and management for marketing, branding, promoting or advertising the goods and services of others
Original Filing Basis:
Filing Basis: Section 1(a), 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, 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 09/30/2013 and first used in commerce at least as early as 09/30/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Advertising, marketing, and publicity services, namely, promoting goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium; Advertising, marketing, and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium; Creating corporate and brand identity for others; Advertising consultancy; Development of marketing strategies and concepts, conducting market research and surveys; Preparation and realization of media and advertising plans and concepts; Management of advertising accounts; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business consultation and management regarding marketing activities and launching of new products; Public relations; Public relations services, reputation management services, consulting services relating to publicity developing and management of promotional campaigns for businesses; Public relations services; Arranging and conducting special events for business purposes, event planning and management for marketing, branding, promoting or advertising the goods and services of others; Business reputation management services; Consulting services relating to publicity development and management of promotional campaigns for businesses; Arranging and conducting special events for business purposes; Event planning and management for marketing, branding, promoting or advertising the goods and services of othersClass 035 for Advertising, marketing, and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium; Creating corporate and brand identity for others; Advertising consultancy; Development of marketing strategies and concepts, conducting market research and surveys; Preparation and realization of media and advertising plans and concepts; Management of advertising accounts; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business consultation and management regarding marketing activities and launching of new products; Public relations; Public relations services; Business reputation management services; Consulting services relating to publicity development and management of promotional campaigns for businesses; Arranging and conducting special events for business purposes; Event planning and management for marketing, branding, promoting or advertising the goods and services of others
Deleted Filing Basis: 1(a)
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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Examining Attorney's requirement to disclaim COLLECTIVE is addressed in another section of this response.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Rebecca Nittle/      Date: 11/13/2014
Signatory's Name: Rebecca Nittle
Signatory's Position: Attorney of record, Arizona bar member
Signatory's Phone Number: 623.537.7771


Response Signature
Signature: /Rebecca Nittle/     Date: 11/13/2014
Signatory's Name: Rebecca Nittle
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 623.537.7771

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76715759
Internet Transmission Date: Thu Nov 13 23:35:55 EST 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201411132335553
67038-76715759-5009d975de09f2189acaf4323
c476625b1fab14a4602613d53db7d296a24abfa6
-N/A-N/A-20141113222321643041