Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87283706 NT (Stylized and/or with Design, see http://uspto.report/TM/87283706/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 035 for Administration of consumer loyalty programs which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization and administration services for the supply of benefits for customer loyalty and frequent buyer schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization, operation and supervision of customer loyalty schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; sales promotion through customer loyalty programmes for others; advertising services; rental of advertising time on communication media; business management assistance; providing business information; provision of commercial and business contact information; commercial intermediation services, namely, matching potential customers with suitable educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; conducting market studies; online advertising on a computer network; provision of an online marketplace for buyers and sellers of goods and services; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; providing television home shopping services in the field of general consumer merchandise; publication of publicity texts
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Administration of consumer loyalty programs which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization and administration services for the supply of benefits for customer loyalty and frequent buyer schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization, operation and supervision of customer loyalty schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; sales promotion through customer loyalty programmes for others; advertising services; rental of advertising time on communication media; business management assistance; providing business information; provision of commercial and business contact information; commercial intermediation services, namely, matching potential customers with suitable educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; conducting market studies; online advertising on a computer network; provision of an online marketplace for buyers and sellers of goods and services; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; providing television home shopping services in the field of general consumer merchandise; publication of publicity texts; provision of educational information in the field of business and business leadership development; provision of educational information online from a computer database and on the global communications network in the field of business and business leadership developmentClass 035 for Administration of consumer loyalty programs which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization and administration services for the supply of benefits for customer loyalty and frequent buyer schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; organization, operation and supervision of customer loyalty schemes which provides discounts on educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; sales promotion through customer loyalty programmes for others; advertising services; rental of advertising time on communication media; business management assistance; providing business information; provision of commercial and business contact information; commercial intermediation services, namely, matching potential customers with suitable educational conference, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; conducting market studies; online advertising on a computer network; provision of an online marketplace for buyers and sellers of goods and services; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; providing television home shopping services in the field of general consumer merchandise; publication of publicity texts; provision of educational information in the field of business and business leadership development; provision of educational information online from a computer database and on the global communications network in the field of business and business leadership development
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing educational demonstrations; providing educational information in the field of business and personal development and leadership development for the purpose of academic study; teaching in the field of business and personal development and leadership development; educational services, namely, providing classes and instructions in the field of business and personal development and leadership development; arranging and conducting educational conferences, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; training services in the field of business and personal development and leadership development; provision of educational information in the field of business and personal development and leadership development; entertainment and educational services in the nature of competitions in the field of entertainment and education, namely, business and personal development and leadership development; educational services, namely, conducting classes, seminars, conferences, workshops in the field of business and personal development and leadership development and distribution of training materials in connection therewith; educational services in the nature of correspondence schools; providing online training courses in the field of business and personal development and leadership development; provision of educational information online from a computer database and on the global communications network in the field of business and personal development and leadership development; provision of instructional services online from a computer database and on the global communications network; publication of news, text, books and journals other than publicity texts by electronic and digital means; providing non-downloadable on-line electronic publications in the nature of articles in the field of business and personal development and leadership development; publishing digital audio, video and multimedia information online and distributing other than transportation audio records and videos via a global computer network; business training consultancy services; educational consultancy services by analyzing training requirements and the designing of training courses in the field of business and personal development and leadership development; providing online computer games for use network-wide by network users; production, presentation and rental of sound and video recordings; entertainment, cultural and sporting event booking or reservation services provided as part of a customer loyalty or frequent buyer scheme; education services, namely, providing courses and training in the field of business and personal development and leadership development; organization of group recreational activities, namely, arranging gatherings for the discussion of issues in the field of business and personal development and leadership development
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Providing educational demonstrations; providing educational information in the field of business and personal development and leadership development for the purpose of academic study; teaching in the field of business and personal development and leadership development; educational services, namely, providing classes and instructions in the field of business and personal development and leadership development; arranging and conducting educational conferences, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; training services in the field of business and personal development and leadership development; provision of educational information in the field of business and personal development and leadership development; entertainment and educational services in the nature of competitions in the field of entertainment and education, namely, business and personal development and leadership development; educational services, namely, conducting classes, seminars, conferences, workshops in the field of business and personal development and leadership development and distribution of training materials in connection therewith; educational services in the nature of correspondence schools; providing online training courses in the field of business and personal development and leadership development; provision of instructional services online from a computer database and on the global communications network; provision of educational information online from a computer database and on the global communications network in the field of business and personal development and leadership development; publication of news, text, books and journals other than publicity texts by electronic and digital means; providing non-downloadable on-line electronic publications in the nature of articles in the field of business and personal development and leadership development; publishing digital audio, video and multimedia information online and distributing other than transportation audio records and videos via a global computer network; business training consultancy services; educational consultancy services by analyzing training requirements and the designing of training courses in the field of business and personal development and leadership development; providing online computer games for use network-wide by network users; production, presentation and rental of sound and video recordings; entertainment, cultural and sporting event booking or reservation services provided as part of a customer loyalty or frequent buyer scheme; education services, namely, providing courses and training in the field of business and personal development and leadership development; organization of group recreational activities, namely, arranging gatherings for the discussion of issues in the field of business and personal development and leadership developmentClass 041 for Providing educational demonstrations; providing educational information in the field of business and personal development and leadership development for the purpose of academic study; teaching in the field of business and personal development and leadership development; educational services, namely, providing classes and instructions in the field of business and personal development and leadership development; arranging and conducting educational conferences, workshops, seminars, symposiums and congresses in the field of business and personal development and leadership development; training services in the field of business and personal development and leadership development; entertainment and educational services in the nature of competitions in the field of entertainment and education, namely, business and personal development and leadership development; educational services, namely, conducting classes, seminars, conferences, workshops in the field of business and personal development and leadership development and distribution of training materials in connection therewith; educational services in the nature of correspondence schools; providing online training courses in the field of business and personal development and leadership development; provision of instructional services online from a computer database and on the global communications network; publication of news, text, books and journals other than publicity texts by electronic and digital means; providing non-downloadable on-line electronic publications in the nature of articles in the field of business and personal development and leadership development; publishing digital audio, video and multimedia information online and distributing other than transportation audio records and videos via a global computer network; business training consultancy services; educational consultancy services by analyzing training requirements and the designing of training courses in the field of business and personal development and leadership development; providing online computer games for use network-wide by network users; production, presentation and rental of sound and video recordings; entertainment, cultural and sporting event booking or reservation services provided as part of a customer loyalty or frequent buyer scheme; education services, namely, providing courses and training in the field of business and personal development and leadership development; organization of group recreational activities, namely, arranging gatherings for the discussion of issues in the field of business and personal development and leadership development
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)
Response Signature
Signature: /jgc/     Date: 03/23/2018
Signatory's Name: Joseph G. Chu
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 323-983-2293

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87283706
Internet Transmission Date: Sat Mar 24 02:44:09 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20180324024409274
769-87283706-510151458d8239a3d9026f53c2a
46d9c95ac5fc66548ef1c470a950725650e75a41
-N/A-N/A-20180324022844864880