Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77115396 has been amended as follows:

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

Function as a Mark

The Examining Attorney has indicated that the proposed mark, as used in the initial specimens, does not function as a mark to identify and distinguish applicant's services from those of others and indicate their source.  The Examining Attorney's comments refer primarily to services and do not specifically distinguish between the two classes applied for that relate to goods rather than services.  Applicant believes that the refusal may be properly directed to the classes of services, but that the specimens of use submitted with regard to the classes of goods are sufficient.  Nevertheless, applicant responds on the premise that the Examining Attorney's comments are directed equally to both the classes of goods as well as the classes of services applicant has applied for registration in.  Accordingly, applicant submits herewith additional specimens of use for each class. 

 The evidence consists of three specimens of use.  One is an advertisement of a seminar at which the identified services would be rendered and at which the identified goods would be used and available.  A second specimen is a screen capture of the website at which both the goods and services are available for purchase or scheduling.  The trademark is also used in video segments hosted at the website.  The third specimen is a reduced image of a game box bottom.  Integral to all three specimens is the use of the trademark that is the subject of this registration.  The trademark is used in each specimen, and across applicants products and advertisements concerning its services generally, in such a way as to identify the applicant as the source of goods and services identified by and associated with the trademark.

Identification of Goods and Services

Applicant adopts the Examining Attorney's suggested amendments to the identification of goods and services as stated in the office action.

Conclusion

In view of the foregoing, Applicant respectfully submits that this application is now in condintion for registration and therefore earnestly solicits a Notice of Publication.  If it would be helpful in expediting the prosecution of this application, the undersigned would welcome a telephone call at the telephone number listed below.

Respectfully Submitted

Brent M. Burningham

(801) 547-9555

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Instructional and teaching material, namely, books, workbooks, pamphlets featuring financial educational information
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.

Proposed: Class 016 for Printed instructional and teaching material, namely, books, workbooks, pamphlets featuring financial educational information
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 016. The specimen(s) submitted consists of A screen capture of applicant's website, an advertisement concerning applicants goods and 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."
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Board Games
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.

Proposed: Class 028 for Board Games
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 028. The specimen(s) submitted consists of A screen capture of applicant's website, an image of the box bottom within which applicant's game is sold and distributed.
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."
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial and wealth accumulation and management information provided by electronic methods including via internet access
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.

Proposed: Class 036 for Financial and wealth accumulation services, namely financial management consultation; providing financial, wealth accumulation and financial management information via the internet
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 036. The specimen(s) submitted consists of A screen capture of applicant's website, an advertisement concerning applicants goods and 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."
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, conducting classes, seminars, conferences, webinars and workshops in the field of financial education and distribution of related course material
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.

Proposed: Class 041 for Educational services, namely, conducting classes, seminars, conferences, on-line seminars, and workshops in the field of financial education and distributing course material for the classes, seminars, conferences, on-line seminars and workshops
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 09/27/2006 and first used in commerce at least as early as 02/22/2007, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 041. The specimen(s) submitted consists of A screen capture of applicant's website, an advertisement concerning applicants goods and 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."
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
.pdf
Converted PDF file(s) (1 page)
Specimen File1

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
BRENT M BURNINGHAM
PO BOX 12
KAYSVILLE, UT 84037-0012

Proposed:
BRENT M BURNINGHAM, having an address of
PO BOX 12 KAYSVILLE, Utah 84037
United States
(801) 547-9555

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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: /BMB/      Date: 12/17/2007
Signatory's Name: Brent M Burningham
Signatory's Position: Attorney of record

Response Signature
Signature: /BMB/     Date: 12/17/2007
Signatory's Name: Brent M Burningham
Signatory's Position: Attorney of record

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.

Mailing Address:    BRENT M BURNINGHAM
   PO BOX 12
   KAYSVILLE, Utah 84037
        
Serial Number: 77115396
Internet Transmission Date: Mon Dec 17 21:03:51 EST 2007
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2007121721035135
7159-77115396-4104430d1c39ffcae5bc137849
52b4a511-N/A-N/A-20071217195927469066