Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85011983 has been amended as follows:

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

RE: Section 2(d) Refusal - likelihood of confusion with the registered mark

I believe the Applicant may be overemphasizing the generality of their core service that they wish the mark registered for which is causing this objection.  The core service centers around social impact of a the business of a consumer of their services.  Although this more general language was acceptable to the Canadian Trade Marks Office, upon reflection, therefore, I believe that a narrower description of the services focused on social impact should be sufficient to distinguish the narrow focus of their services from the registration cited as follows:

business consulting services in the fields of  the social impact of  the management, organization, strategy, investment, and operations  of individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations in International Class 035; and

business training, educational, and instructional services, namely providing courses and seminars, all in the field of the social impact of the management, organization, strategy, investment,  and operations of individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations in International Class 041

This revision also addresses the request for revision to the class 041 services as requested and agreed to.

 

RE: Specimens Objection

Yes the specimen submitted in relation to class 041 is the same as class 035.  This specimen is a business brochure which is an acceptable form of specimen.  The brochure is handed out as part of a folder of packaged material each time the training / educational services are performed to serve as a starting point of discussion for the training.  Therefore I submit that the brochure should be accepted under class 041 as well as submitted.

I respectfully request your reconsideration of the objections raised and request that the application now be allowed to proceed to publication.

Yours sincerely,

Robin S Johnson

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consulting services in the fields of management, organization, strategy, investment, operations and social impact, provided to individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations
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 04/30/2005 and first used in commerce at least as early as 09/30/2008, and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Canada registration number TMA763869 registered 04/09/2010 with a renewal date of __________ and an expiration date of 04/09/2025 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Business consulting services in the fields of management, organization, strategy, investment, operations and social impact, provided to individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations; business consulting services in the fields of social impact of the management, organization, strategy, investment, and operations of individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associationsClass 035 for business consulting services in the fields of social impact of the management, organization, strategy, investment, and operations of individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations
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 04/30/2005 and first used in commerce at least as early as 09/30/2008, and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Canada registration number TMA763869 registered 04/09/2010 with a renewal date of __________ and an expiration date of 04/09/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Business training, educational, instructional services, namely providing courses and seminars, all in the fields of management, organization, strategy, investment, operations and social impact provided to individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations
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 04/30/2005 and first used in commerce at least as early as 09/30/2008, and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Canada registration number TMA763869 registered 04/09/2010 with a renewal date of __________ and an expiration date of 04/09/2025 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Business training, educational, instructional services, namely providing courses and seminars, all in the fields of management, organization, strategy, investment, operations and social impact provided to individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations; business training, educational, and instructional services, namely providing courses and seminars, all in the field of the social impact of the management, organization, strategy, investment, and operations of individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associationsClass 041 for business training, educational, and instructional services, namely providing courses and seminars, all in the field of the social impact of the management, organization, strategy, investment, and operations of individuals and public, private, non-profit, for-profit, governmental, business, domestic, foreign, international and/or multinational organizations and associations
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 04/30/2005 and first used in commerce at least as early as 09/30/2008, and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Canada registration number TMA763869 registered 04/09/2010 with a renewal date of __________ and an expiration date of 04/09/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

SIGNATURE(S)
Response Signature
Signature: /ROBIN JOHNSON/     Date: 08/11/2011
Signatory's Name: ROIBN S JOHNSON
Signatory's Position: Attorney of Record, Alberta Canada with authority to practice before USPTO

The signatory has confirmed that he/she is a Canadian attorney/agent, or an associate thereof, who represents an applicant located in Canada; and he/she is either registered with the USPTO and in good standing as as patent agent under 37 C.F.R. §11.6(c) or has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85011983
Internet Transmission Date: Thu Aug 11 20:54:39 EDT 2011
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2011081120543953
9913-85011983-480898f3a7b2ec45e41565d55c
0e3485ffb-N/A-N/A-20110811202215398748