Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 85761524 CREST (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85761524) has been amended as follows:

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

REMARKS

The outstanding Office action refuses registration of the above-captioned mark, asserting that the mark of the above-captioned application is likely to be confused with a prior registered mark and that the Application does not specify a filing basis. Applicant herein amends the Application to specify that the Application is based on a bona fide intent to use the mark in commerce. A declaration under 37 C.F.R. § 2.20 is submitted concurrently herewith. Entry of the Amendment is respectfully requested. 

The outstanding Office action also refuses registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting that the proposed mark is likely to be confused with the registered mark CRESTA (Reg. No. 3,183,142). Because the cited mark was cancelled on July 19, 2013 under Section 8 of the U. S. Trademark Act, the cited registration is now moot and the refusal based thereon should now be withdrawn.  

CONCLUSION

            For the reasons set forth above, Applicant respectfully submits that the Application to register the mark is now acceptable.  Applicant therefore requests that the mark be advanced to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business services, namely, management services provided to physician practices
Original Filing Basis:
Proposed: Class 035 for Business services, namely, management services provided to physician practices
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.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. 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. Section 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. Section 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: /Martha B. Allard/      Date: 08/14/2013
Signatory's Name: Martha B. Allard
Signatory's Position: Attorney, TN Bar Member
Signatory's Phone Number: 615-742-7944


Response Signature
Signature: /Martha B. Allard/     Date: 08/14/2013
Signatory's Name: Martha B. Allard
Signatory's Position: Attorney of Record, TN bar member

Signatory's Phone Number: (615) 742-7944

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: 85761524
Internet Transmission Date: Wed Aug 14 18:01:53 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2013081418015305
1229-85761524-50080efcb23639bed304b78ae7
f9d164c736f1b1a4568e4fbc553b47f4649eff17
-N/A-N/A-20130814172032189911