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. 86142914 IEG SPONSORSHIP REPORT(Standard Characters, see http://uspto.report/TM/86142914/mark.png) 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 041 for Electronic publications in the field of sponsorship marketing; providing an Internet website featuring publications and information in the field of sponsorship marketing
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 05/27/2002 and first used in commerce at least as early as 05/27/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Electronic publications in the field of sponsorship marketing; Non-downloadable electronic publications in the nature of newsletters and reports in the field of sponsorship marketing; providing an Internet website featuring publications and information in the field of sponsorship marketing; providing an Internet website featuring non-downloadable electronic publications in the nature of newsletters and reports in the field of sponsorship marketingClass 041 for Non-downloadable electronic publications in the nature of newsletters and reports in the field of sponsorship marketing; providing an Internet website featuring non-downloadable electronic publications in the nature of newsletters and reports in the field of sponsorship marketing
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 05/27/2002 and first used in commerce at least as early as 05/27/2002 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Providing an Internet website featuring information in the field of sponsorship marketing
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 05/27/2002 and first used in commerce at least as early as 05/27/2002 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035 . The specimen(s) submitted consists of web pages .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
"SPONSORSHIP MARKETING" has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


Miscellaneous Statement
In response to the Examining Attorney's request for a disclaimer of the wording "SPONSORSHIP REPORT" within the subject Mark, Applicant asserts a claim of acquired distinctiveness under Section 2(f) based on use of that term for more than 5 years.


FEE(S)
Fee(s) in the amount of $325 is being submitted.

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: /Jeffrey C. Katz/      Date: 08/29/2014
Signatory's Name: Jeffrey C. Katz
Signatory's Position: Applicant's Attorney, NY Bar Member
Signatory's Phone Number: (212) 468-4800


Response Signature
Signature: /Jeffrey C. Katz/     Date: 08/29/2014
Signatory's Name: Jeffrey C. Katz
Signatory's Position: Applicant's Attorney, NY Bar Member

Signatory's Phone Number: (212) 468-4800

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.

        
RAM Sale Number: 86142914
RAM Accounting Date: 08/29/2014
        
Serial Number: 86142914
Internet Transmission Date: Fri Aug 29 11:07:14 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.X.XXX-20140829110714298
960-86142914-500af25edc8909f1f5a534d97ab
2014425468216b538b3790955e19feebc8f34bc-
DA-8558-20140829105616743608