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. 88032055 WHITE OAK (Stylized and/or with Design, see http://uspto.report/TM/88032055/mark.png) has been amended as follows:
PENDING SERIAL NUMBER(S)
Serial number(s) 87705454 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).

ARGUMENT(S)
Original PDF file:
PE_19294203254-190755361_ ._WHITE_OAK__Design_-_Res ponse_to_Suspension_Notic e__48569768_.pdf
Converted PDF file(s) (8 pages)
Pending File1
Pending File2
Pending File3
Pending File4
Pending File5
Pending File6
Pending File7
Pending File8
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business advisory services; business management consulting; business strategic planning services
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 08/00/2014 and first used in commerce at least as early as 08/00/2014, and is now in use in such commerce.

Proposed: Class 035 for Business advisory services; business management consulting; business strategic planning services
Deleted Filing Basis: 1(a)
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)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial consulting; financial advisory services; investment advisory services; investment brokerage services; loan financing services; equipment financing and lease purchasing financing services; financial asset management and research
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 08/00/2014 and first used in commerce at least as early as 08/00/2014, and is now in use in such commerce.

Proposed: Class 036 for Financial consulting; financial advisory services; investment advisory services; investment brokerage services; loan financing services; equipment financing and lease purchasing financing services; financial asset management and research
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 08/00/2014 and first used in commerce at least as early as 08/00/2014, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 036. The specimen(s) submitted consists of screenshots from the Applicant's website showing use of the mark in association with the services offered.
"The substitute (or new, 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, 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]. Specimen File1
Specimen File2


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: White Oak Global Advisors, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      3 Embarcadero Center, 5th Floor
      San Francisco, California 94111
      United States
Proposed: White Oak Global Advisors, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      3 Embarcadero Center, 5th Floor
      San Francisco, California 94111
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Susan E. Hollander. Susan E. Hollander of VENABLE LLP, is located at

      101 CALIFORNIA STREET, SUITE 3800
      SAN FRANCISCO, California
      United States
The docket/reference number is 113733415724.

The phone number is 415-653-3750.

The fax number is 415-653-3755.

The email address is ipdocketingsf@venable.com

The owner's/holder's proposed attorney information: Susan E. Hollander. Other appointed attorneys are Sharoni S. Finkelstein. Susan E. Hollander of VENABLE 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

      101 California Street, Suite 3800
      San Francisco, California 94111
      United States
The docket/reference number is 113733415724.

The phone number is 415-653-3750.

The fax number is 415-653-3755.

The email address is ipdocketingsf@venable.com

Susan E. Hollander 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.Correspondence Information (current):
      SUSAN E. HOLLANDER
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketingsf@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Susan E. Hollander
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketingsf@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ssfinkelstein@venable.com; emgornall@venable.com

The docket/reference number is 113733415724.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Sharoni S. Finkelstein/    Date: 04/30/2020
Signatory's Name: Sharoni S. Finkelstein
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 310-229-9900

Response Suspension Inquiry Signature
Signature: /Sharoni S. Finkelstein/     Date: 04/30/2020
Signatory's Name: Sharoni S. Finkelstein
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 310-229-9900

Mailing Address:    SUSAN E. HOLLANDER
   VENABLE LLP
   
   101 CALIFORNIA STREET, SUITE 3800
   SAN FRANCISCO, California
Mailing Address:    Susan E. Hollander
   VENABLE LLP
   101 California Street, Suite 3800
   San Francisco, California 94111
        
Serial Number: 88032055
Internet Transmission Date: Thu Apr 30 13:53:28 ET 2020
TEAS Stamp: USPTO/RSI-XXX.XX.XXX.XXX-202004301353287
70668-88032055-710403683f77919b8c87f553a
73ce71168d69a81126e3d594b1793599b922e86-
N/A-N/A-20200429190755361908