TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 87942743 LV (Stylized and/or with Design, see http://uspto.report/TM/87942743/mark.png) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Canada registration number TMA1,064,895 registered 12/02/2019, with a renewal date of __________ and an expiration date of 12/02/2029, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_6619578166-135652069_._88382-132CA_Registration_Certificate.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for providing online educational testing services in the nature of proctoring of examinations and verification of attendance in training programs; Providing temporary use of online non-downloadable software to verify a candidate's identity when attending a course and when taking an exam, and to determine whether the candidate has an acceptable level of attendance; software as a service (SAAS) services featuring software for verifying a candidate's identity and attendance when taking an online course or online exam, for determining whether the candidate has an acceptable level of attendance, for delivering the questions and monitoring the testing, for issuing digital certificates on successful completion of courses and exams, and for storing the data; providing temporary use of online non-downloadable computer based software for administering tests online, and storing the test results; software as a service (SAAS) services featuring software for administering courses and exams for others, storing the examination results, and issuing digital certificates on successful completion of courses and exams
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1877565 filed 01/15/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 042 for providing online educational testing services in the nature of proctoring of examinations and verification of attendance in training programs; Providing temporary use of online non-downloadable software to verify a candidate's identity when attending a course and when taking an exam, and to determine whether the candidate has an acceptable level of attendance; software as a service (SAAS) services featuring software for verifying a candidate's identity and attendance when taking an online course or online exam, for determining whether the candidate has an acceptable level of attendance, for delivering the questions and monitoring the testing, for issuing digital certificates on successful completion of courses and exams, and for storing the data; providing temporary use of online non-downloadable computer based software for administering tests online, and storing the test results; software as a service (SAAS) services featuring software for administering courses and exams for others, storing the examination results, and issuing digital certificates on successful completion of courses and exams
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1877565 filed 01/15/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Canada registration number TMA1,064,895 registered 12/02/2019 with a renewal date of __________ and an expiration date of 12/02/2029 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-6619578166-135652069_._88382-132CA_Registration_Certificate.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3


The applicant's current attorney information: Kimberly I. Shimomura. Other appointed attorneys are Kimberly I. Shimomura. Kimberly I. Shimomura of HARTER SECREST & EMERY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1600 BAUSCH & LOMB PLACE
      ROCHESTER, New York
      US
The docket/reference number is 88382.000132.

The phone number is 585-231-1382.

The fax number is 585-232-2152.

The email address is kshimomura@hselaw.com

The applicants proposed attorney information: Kimberly I. Shimomura. Other appointed attorneys are Brian B. Shaw, Jon O. Webster, Anne F. Downey, Katherine B. Felice. Kimberly I. Shimomura of Harter Secrest & Emery LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1600 Bausch & Lomb Place
      Rochester, New York 14604
      United States
The docket/reference number is 88382.000132.

The phone number is 585-231-1382.

The fax number is 585-232-2152.

The email address is kshimomura@hselaw.com

Kimberly I. Shimomura submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Kimberly I. Shimomura. Other appointed attorneys are Kimberly I. Shimomura. Kimberly I. Shimomura of HARTER SECREST & EMERY LLP, and the attorney(s) is located at

      1600 BAUSCH & LOMB PLACE
      ROCHESTER, New York
      US
The docket/reference number is 88382.000132.

The phone number is 585-231-1382.

The fax number is 585-232-2152.

The email address is kshimomura@hselaw.com; trademark@hselaw.com

The applicants proposed correspondence information: Kimberly I. Shimomura. Kimberly I. Shimomura of Harter Secrest & Emery LLP, is located at

      1600 Bausch & Lomb Place
      Rochester, New York 14604
      United States
The docket/reference number is 88382.000132.

The phone number is 585-231-1382.

The fax number is 585-232-2152.

The email address is kshimomura@hselaw.com; trademark@hselaw.com

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. §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. §1051(a) or AAU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the application or AAU filing date; 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/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: for a trademark or service mark application, the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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 of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Kimberly I. Shimomura/    Date: 12/06/2019
Signatory's Name: Kimberly I. Shimomura
Signatory's Position: Attorney of Record, New York bar member
Signatory's Phone Number: 585-231-1382

Response Suspension Inquiry Signature
Signature: /Kimberly I. Shimomura/     Date: 12/06/2019
Signatory's Name: Kimberly I. Shimomura
Signatory's Position: Attorney of Record, New York State bar member
Signatory's Phone Number: 5852311382

Mailing Address:    Kimberly I. Shimomura
   HARTER SECREST & EMERY LLP
   
   1600 BAUSCH & LOMB PLACE
   ROCHESTER, New York
Mailing Address:    Kimberly I. Shimomura
   Harter Secrest & Emery LLP
   1600 Bausch & Lomb Place
   Rochester, New York 14604
        
Serial Number: 87942743
Internet Transmission Date: Fri Dec 06 15:23:44 EST 2019
TEAS Stamp: USPTO/RSI-XX.XXX.XX.XXX-2019120615234493
8785-87942743-700c2e433e52cdcd6558d50ef2
7539f2fafd52b8c171f495c74cda581bc8ca-N/A
-N/A-20191206135652069114