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. 85655179 ADVANTAGE (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85655179) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Market research and analysis services; business survey research services, namely conducting surveys to measure relationships between retailers and suppliers, preparation and presentation of surveys, and advising on strategies to improve the relationships between the retailers and suppliers
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 11/16/2010 and first used in commerce at least as early as 11/16/2010 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1575152 filed 04/26/2012]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: market research and analysis services; business survey research services, namely conducting surveys to measure relationships between retailers and suppliers, preparation and presentation of surveys, and advising on strategies to improve the relationships between the retailers and suppliers; business survey research services, namely conducting benchmarking services in the nature of business research and surveys to measure quality, efficiencies, strengths, and weaknesses of supply chain, executive, and managerial relationships between retailers and suppliers, preparation and presentation of these surveys, and advising on strategies to improve the executive, managerial, and supply chain relationships between retailers and suppliersClass 035 for market research and analysis services; business survey research services, namely conducting benchmarking services in the nature of business research and surveys to measure quality, efficiencies, strengths, and weaknesses of supply chain, executive, and managerial relationships between retailers and suppliers, preparation and presentation of these surveys, and advising on strategies to improve the executive, managerial, and supply chain relationships between retailers and suppliers
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 11/16/2010 and first used in commerce at least as early as 11/16/2010 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1575152 filed 04/26/2012]. 15 U.S.C.Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant requests that this application be suspended until Application No. 1575152 in Canada proceeds to registration.


SIGNATURE(S)
Response Signature
Signature: /PJC/     Date: 04/09/2013
Signatory's Name: Patrick J. Concannon
Signatory's Position: Attorney of record, Massachusetts bar member

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: 85655179
Internet Transmission Date: Tue Apr 09 16:43:48 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20130409164348339
480-85655179-5004fc315e46ee6d3ec96f6f631
17dddd784a5656a0a8f12e38c697dd4ac67a-N/A
-N/A-20130405130716431112