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. 86335204 VAPOR(Standard Characters, see http://uspto.report/TM/86335204/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND

TRADEMARK OFFICE

TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:

The Applicant for trademark serial number 86/335,204 respectfully requests that the Commissioner enter the following response into the record

IDENTIFICATION OF GOODS

In response to the Office Action issued on October 29, 2014, Applicant has deleted the goods/services from its application for which the Examiner cited as confusingly similar to U.S. registration no. 4460840. As a result, Applicant believes the Examiner’s objections are rendered moot.   The remaining changes to the goods/services are those requested by the Examiner for clarification.

IC 009

downloadable electronic publications, namely, articles, newsletters, books, and manuals in the field of evangelism, discipleship, religion, business development and humanitarian aid; pre-recorded videos, featuring religious, business development and humanitarian content; pre-recorded videos in the field of evangelism, discipleship, religion and humanitarian aid for promotion of charitable activities, evangelism, discipleship, religion, business development and humanitarian aid

IC035

Retailing services namely including on-line and retail store services featuring in relation to clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; promotion and advertising services in the field of clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards related to the aforesaid; charitable and humanitarian services, namely business management, development and administration; charitable and humanitarian services, namely employment recruiting services and[[,]] organizing and conducting volunteer programs and community service projects; charitable and humanitarian services, namely, organizing and developing economic development and health projects; charitable and humanitarian services, namely coordination of the procurement and distribution of donations in the form of food, clothing, personal items, household items and educational materials to needy persons from individual, civic, business and religious donors; charitable and humanitarian services, namely, organizing projects that aim to improve the lives of which benefit people in need; charitable, business development and humanitarian services, namely, organizing and developing projects that aim to improve the lives of underprivileged or impoverished people or people in need; charitable and humanitarian services, namely developing fundraising campaigns  for others through the use of newspapers, radio, and other media, billboards, the Internet and print material such as newsletters; promotion of donor programs

 

 

IC036

Charitable fundraising services to support Christian ministry, evangelism, business development and humanitarian aid in the developing countries; charitable fundraising services to support Christian ministry by means of through sports programs; charitable fundraising services to support sustainable centers for humanitarian aid, medical relief and alleviation of poverty; charitable fundraising services to support provision of educational services, tuition, supplies, uniforms and books to children in developing countries; charitable fundraising services to support infrastructure development; charitable fundraising services to support provision of food and clean water; charitable fundraising services to support Christian ministry, business development and humanitarian projects

041

Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field events and trips in the field of Christian ministry, discipleship, business development and humanitarian aid and distribution of training material in connection therewith; educational services, namely providing skills training in the field of general education, business, farming and agricultural development to individuals in need; educational services, namely developing curriculum for others in the field of training and assistance in business, farming and agricultural development; educational services, namely providing training in the field of life skills training and community development; educational services, namely providing business mentoring and micro-business development mentoring

 

CONCLUDING STATEMENTS

If the Examiner has any questions or comments, a telephone call is invited to Applicant’s attorney of record, Thomas G. Peterson, Esq. at 205-521-8084.  Applicant has fully reviewed the statements herein, and has diligently sought to comply with and respond to each requirement and issue raised by the Examining Attorney.

 

                                                            Thomas G. Peterson

                                                            Attorney for Applicant

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for downloadable electronic publications, namely, articles, newsletters, books, and manuals in the field of evangelism, discipleship, religion, business development and humanitarian aid; pre-recorded videos, featuring religious, business development and humanitarian content; pre-recorded videos for promotion of charitable activities, evangelism, discipleship, religion, business development and humanitarian aid
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 11/30/2005 and first used in commerce at least as early as 11/30/2005 , and is now in use in such commerce.

Proposed:
Tracked Text Description: downloadable electronic publications, namely, articles, newsletters, books, and manuals in the field of evangelism, discipleship, religion, business development and humanitarian aid; downloadable electronic publications, namely, articles, newsletters, books, and manuals in the field of evangelism, discipleship, religion, and humanitarian aid; pre-recorded videos, featuring religious, business development and humanitarian content; pre-recorded videos, featuring religious, and humanitarian content; pre-recorded videos for promotion of charitable activities, evangelism, discipleship, religion, business development and humanitarian aid; pre-recorded videos in the field of evangelism, discipleship, religion and humanitarian aid for promotion of charitable activitiesClass 009 for downloadable electronic publications, namely, articles, newsletters, books, and manuals in the field of evangelism, discipleship, religion, and humanitarian aid; pre-recorded videos, featuring religious, and humanitarian content; pre-recorded videos in the field of evangelism, discipleship, religion and humanitarian aid for promotion of charitable activities
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 11/30/2005 and first used in commerce at least as early as 11/30/2005 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retailing services including on-line and retail services in relation to clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; promotion and advertising services related to the aforesaid; charitable and humanitarian services, namely business management, development and administration; charitable and humanitarian services, namely recruiting, organizing and conducting volunteer programs and community service projects; charitable and humanitarian services, namely, organizing and developing economic development and health projects; charitable and humanitarian services, namely coordination of the procurement and distribution of donations to needy persons; charitable and humanitarian services, namely, organizing projects which benefit people in need; charitable, business development and humanitarian services, namely, organizing and developing projects that aim to improve the lives of underprivileged or impoverished people or people in need; charitable and humanitarian services, namely fundraising campaigns through the use of newspapers, radio, and other media, billboards, the Internet and print material such as newsletters; promotion of donor programs
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 08/31/2013 and first used in commerce at least as early as 08/31/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Retailing services including on-line and retail services in relation to clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; Retailing services namely on-line and retail store services featuring clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; promotion and advertising services related to the aforesaid; promotion and advertising services in the field of clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; charitable and humanitarian services, namely business management, development and administration; charitable and humanitarian services, namely employment recruiting services and organizing and conducting volunteer programs and community service projects; charitable and humanitarian services, namely recruiting, organizing and conducting volunteer programs and community service projects; charitable and humanitarian services, namely, organizing and developing economic development and health projects; charitable and humanitarian services, namely coordination of the procurement and distribution of donations in the form of food, clothing, personal items, household items and educational materials to needy persons from individual, civic, business and religious donors; charitable and humanitarian services, namely coordination of the procurement and distribution of donations to needy persons; charitable and humanitarian services, namely, organizing projects that aim to improve the lives of people in need; charitable and humanitarian services, namely, organizing projects which benefit people in need; charitable, business development and humanitarian services, namely, organizing and developing projects that aim to improve the lives of underprivileged or impoverished people or people in need; charitable and humanitarian services, namely developing fundraising campaigns for others through the use of newspapers, radio, and other media, billboards, the Internet and print material such as newsletters; charitable and humanitarian services, namely fundraising campaigns through the use of newspapers, radio, and other media, billboards, the Internet and print material such as newsletters; promotion of donor programsClass 035 for Retailing services namely on-line and retail store services featuring clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; promotion and advertising services in the field of clothing, jewelry, water bottles, bumper stickers, wristbands, promotional items and lanyards; charitable and humanitarian services, namely employment recruiting services and organizing and conducting volunteer programs and community service projects; charitable and humanitarian services, namely, organizing and developing economic development and health projects; charitable and humanitarian services, namely coordination of the procurement and distribution of donations in the form of food, clothing, personal items, household items and educational materials to needy persons from individual, civic, business and religious donors; charitable and humanitarian services, namely, organizing projects that aim to improve the lives of people in need; charitable, business development and humanitarian services, namely, organizing and developing projects that aim to improve the lives of underprivileged or impoverished people or people in need; charitable and humanitarian services, namely developing fundraising campaigns for others through the use of newspapers, radio, and other media, billboards, the Internet and print material such as newsletters; promotion of donor programs
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 08/31/2013 and first used in commerce at least as early as 08/31/2013 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Charitable fundraising services to support Christian ministry, evangelism, business development and humanitarian aid in the developing countries; charitable fundraising services to support Christian ministry through sports programs; charitable fundraising services to support sustainable centers for humanitarian aid, medical relief and alleviation of poverty; charitable fundraising services to support provision of educational services, tuition, supplies, uniforms and books to children in developing countries; charitable fundraising services to support infrastructure development; charitable fundraising services to support provision of food and clean water; charitable fundraising services to support Christian ministry, business development and humanitarian projects
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 08/31/2011 and first used in commerce at least as early as 08/31/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Charitable fundraising services to support Christian ministry, evangelism, business development and humanitarian aid in the developing countries; charitable fundraising services to support Christian ministry through sports programs; charitable fundraising services to support Christian ministry by means of sports programs; charitable fundraising services to support sustainable centers for humanitarian aid, medical relief and alleviation of poverty; charitable fundraising services to support provision of educational services, tuition, supplies, uniforms and books to children in developing countries; charitable fundraising services to support infrastructure development; charitable fundraising services to support provision of food and clean water; charitable fundraising services to support Christian ministry, business development and humanitarian projectsClass 036 for Charitable fundraising services to support Christian ministry, evangelism, business development and humanitarian aid in the developing countries; charitable fundraising services to support Christian ministry by means of sports programs; charitable fundraising services to support sustainable centers for humanitarian aid, medical relief and alleviation of poverty; charitable fundraising services to support provision of educational services, tuition, supplies, uniforms and books to children in developing countries; charitable fundraising services to support infrastructure development; charitable fundraising services to support provision of food and clean water; charitable fundraising services to support Christian ministry, business development and humanitarian projects
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 08/31/2011 and first used in commerce at least as early as 08/31/2011 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for 041 Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, events and trips in the field of Christian ministry, discipleship, business development and humanitarian aid and distribution of training material in connection therewith; educational services, namely providing skills training to individuals in need; educational services, namely developing training and assistance in business, farming and agricultural development; educational services, namely providing life skills training and community development; educational services, namely providing business mentoring and micro-business development
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 03/31/2014 and first used in commerce at least as early as 03/31/2014 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 041 Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, events and trips in the field of Christian ministry, discipleship, business development and humanitarian aid and distribution of training material in connection therewith; Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of Christian ministry, discipleship, business development and humanitarian aid and distribution of training material in connection therewith; educational services, namely providing skills training to individuals in need; educational services, namely providing skills training in the field of general education, business, farming and agricultural development to individuals in need; educational services, namely developing training and assistance in business, farming and agricultural development; educational services, namely developing curriculum for others in the field of business, farming and agricultural development; educational services, namely providing life skills training and community development; educational services, namely providing training in the field of life skills and community development; educational services, namely providing business mentoring and micro-business development; educational services, namely providing business mentoring and micro-business development mentoringClass 041 for Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps and field trips in the field of Christian ministry, discipleship, business development and humanitarian aid and distribution of training material in connection therewith; educational services, namely providing skills training in the field of general education, business, farming and agricultural development to individuals in need; educational services, namely developing curriculum for others in the field of business, farming and agricultural development; educational services, namely providing training in the field of life skills and community development; educational services, namely providing business mentoring and micro-business development mentoring
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 03/31/2014 and first used in commerce at least as early as 03/31/2014 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /TGP/     Date: 04/29/2015
Signatory's Name: Thomas G. Peterson
Signatory's Position: Attorney of record, Alabama state bar member

Signatory's Phone Number: 205-521-8084

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: 86335204
Internet Transmission Date: Wed Apr 29 15:31:25 EDT 2015
TEAS Stamp: USPTO/ROA-X.XX.XX.XX-2015042915312575405
4-86335204-5305f70c4841cad69fcc412c6fc9b
d17df175eb255c77569889be09a39a3fa41e3-N/
A-N/A-20150429145615938907