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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88038674 |
LAW OFFICE ASSIGNED |
LAW OFFICE 114 |
MARK SECTION |
MARK |
http://uspto.report/TM/88038674/mark.png |
LITERAL ELEMENT |
ADVISORY BOARD MANAGER TOOLBOX |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Per Applicant's counsel's conversation with the Examining Attorney on January 8, 2019, Registration No. 3424175, which was cited as a bar to
registration of the subject application, has lapsed. Indeed, the registration was cancelled on December 7, 2018. Thus, Applicant respectfully requests that the refusal on the basis of likelihood of
confusion be withdrawn as moot. Additionally, Applicant respectfully asserts that no disclaimer is required of ADVISORY BOARD as such terms have acquired distinctiveness based on Applicant's prior
registrations cited in this response. Applicant's prior registrations cover sufficiently similar goods/services. As such, no disclaimer should be required of ADVISORY BOARD and Applicant respectfully
requests that such requirement be withdrawn. |
GOODS AND/OR SERVICES SECTION (016)(class deleted) |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Educational and training services in the fields of business and personnel management |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
Educational and training services in the fields of business and personnel management; Educational services, namely, training in the fields of business and personnel management; Educational services, namely, conducting online
programs in the fields of business and personnel management |
FINAL DESCRIPTION |
Educational services, namely, training in the fields of business and personnel management; Educational services, namely, conducting
online programs in the fields of business and personnel management |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Online programs featuring information and educational materials in the fields of business and personnel management |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Online programs featuring information and educational materials in the fields of business and personnel
management; Providing online non-downloadable software for providing information and educational materials in the fields of business and personnel
management |
FINAL DESCRIPTION |
Providing online non-downloadable software for providing information and educational materials in the fields of business and personnel
management |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
DISCLAIMER |
No claim is made to the exclusive right to use MANAGER apart from the mark as shown. |
ACTIVE PRIOR REGISTRATION(S) |
The applicant claims ownership of active prior U.S. Registration Number(s) 4373053, 3024937, 2699618, and others. |
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s) |
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently
similar goods/services of active U.S. Registration No(s). 4110827, 2106489, 4373053, 3024937, 2699618 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Amy A. Abeloff/ |
SIGNATORY'S NAME |
Amy A. Abeloff |
SIGNATORY'S POSITION |
Attorney of record, California bar member |
SIGNATORY'S PHONE NUMBER |
310-201-9339 |
DATE SIGNED |
01/10/2019 |
RESPONSE SIGNATURE |
/Amy A. Abeloff/ |
SIGNATORY'S NAME |
Amy A. Abeloff |
SIGNATORY'S POSITION |
Attorney of record, California bar member |
SIGNATORY'S PHONE NUMBER |
310-201-9339 |
DATE SIGNED |
01/10/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Jan 10 20:22:26 EST 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.X-201
90110202226803357-8803867
4-620a454ef9c1e3c64e6729b
026f1a714d950cd9b95a6b7c4
b8acc1419456ef29-N/A-N/A-
20190110201950859208 |
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.
88038674 ADVISORY BOARD MANAGER TOOLBOX(Standard Characters, see http://uspto.report/TM/88038674/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Per Applicant's counsel's conversation with the Examining Attorney on January 8, 2019, Registration No. 3424175, which was cited as a bar to registration of the subject application, has lapsed.
Indeed, the registration was cancelled on December 7, 2018. Thus, Applicant respectfully requests that the refusal on the basis of likelihood of confusion be withdrawn as moot. Additionally,
Applicant respectfully asserts that no disclaimer is required of ADVISORY BOARD as such terms have acquired distinctiveness based on Applicant's prior registrations cited in this response.
Applicant's prior registrations cover sufficiently similar goods/services. As such, no disclaimer should be required of ADVISORY BOARD and Applicant respectfully requests that such requirement be
withdrawn.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 016 for Printed educational materials in the fields of business and personnel management
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational and training services in the fields of business and personnel management
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: Educational and training services in the fields of business and personnel management;
Educational
services, namely, training in the fields of business and personnel management;
Educational services, namely, conducting online programs in the fields of business
and personnel managementClass 041 for Educational services, namely, training in the fields of business and personnel management; Educational services, namely, conducting online programs in the
fields of business and personnel management
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 042 for Online programs featuring information and educational materials in the fields of business and personnel management
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: Online programs featuring information and educational materials in the fields of business and personnel management;
Providing online non-downloadable software for providing information and educational materials in the fields of business and personnel managementClass 042 for Providing
online non-downloadable software for providing information and educational materials in the fields of business and personnel management
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.
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use MANAGER apart from the mark as shown.
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4373053, 3024937, 2699618, and others.
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration
No(s). 4110827, 2106489, 4373053, 3024937, 2699618
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. § 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
allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU 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 filing date of the application or AOU on or in
connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of
the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective
membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over
the use of the mark in commerce as of the filing date of the application or AOU; 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: If the applicant filed an unsigned application under 15 U.S.C.
§§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark
application, 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; 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 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.
Signature: /Amy A. Abeloff/ Date: 01/10/2019
Signatory's Name: Amy A. Abeloff
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 310-201-9339
Response Signature
Signature: /Amy A. Abeloff/ Date: 01/10/2019
Signatory's Name: Amy A. Abeloff
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 310-201-9339
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: 88038674
Internet Transmission Date: Thu Jan 10 20:22:26 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201901102022268033
57-88038674-620a454ef9c1e3c64e6729b026f1
a714d950cd9b95a6b7c4b8acc1419456ef29-N/A
-N/A-20190110201950859208