TEAS Response to Suspension Inquiry

THE HUMAN FIX TO HUMAN RISK

Terranova Worldwide Corporation

Response to Suspension Inquiry or Letter of Suspension

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


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88053432
LAW OFFICE ASSIGNED LAW OFFICE 119
MARK SECTION
MARK http://uspto.report/TM/88053432/mark.png
LITERAL ELEMENT THE HUMAN FIX TO HUMAN RISK
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.
FOREIGN APPLICATION(S)
The foreign application(s) No(s). 1909170 being used as the basis for a priority claim under Section 44(d) of the Trademark Act has/have not yet matured into a registration in the applicant's country of origin. I hereby request that the application be re-suspended.
OWNER SECTION (current)
NAME Terranova Worldwide Corporation
MAILING ADDRESS 102-1545 Boul De l'Avenir
CITY Laval, Quebec
ZIP/POSTAL CODE H7S2N5
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY Canada
OWNER SECTION (proposed)
NAME Terranova Worldwide Corporation
MAILING ADDRESS 102-1545 Boul De l'Avenir
CITY Laval, Quebec
ZIP/POSTAL CODE H7S2N5
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY Canada
EMAIL XXXX
GOODS AND/OR SERVICES SECTION (041)(current)
INTERNATIONAL CLASS 041
DESCRIPTION
(Based on 44(d) Priority Application) (Based on Intent to Use) Educational services, namely, providing courses and training namely, online courses and online training in the field of information security; safekeeping of personal information and organization privacy; training in the field of detecting and preventing computer and website security vulnerabilities; educational courses and training in the fields of computer information security awareness, regulatory compliance, business continuity management and sustainable development
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1909170
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY Canada
        FOREIGN FILING DATE 07/17/2018
GOODS AND/OR SERVICES SECTION (041)(proposed)
INTERNATIONAL CLASS 041
TRACKED TEXT DESCRIPTION
(Based on 44(d) Priority Application) (Based on Intent to Use) Educational services, namely, providing courses and training namely, online courses and online training in the field of information security; Educational services, namely, providing courses and training namely, online courses and online training in the field of information security, safekeeping of personal information and organization privacy; safekeeping of personal information and organization privacy; training in the field of detecting and preventing computer and website security vulnerabilities; educational courses and training in the fields of computer information security awareness, regulatory compliance, business continuity management and sustainable development
FINAL DESCRIPTION
Educational services, namely, providing courses and training namely, online courses and online training in the field of information security, safekeeping of personal information and organization privacy; training in the field of detecting and preventing computer and website security vulnerabilities; educational courses and training in the fields of computer information security awareness, regulatory compliance, business continuity management and sustainable development
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 1909170
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY Canada
       FOREIGN FILING DATE 07/17/2018
       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.
GOODS AND/OR SERVICES SECTION (042)(no change)
ATTORNEY INFORMATION (current)
NAME Rebecca A. Liebowitz
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME Venable LLP
STREET P.O. Box 34385
CITY Washington
STATE District of Columbia
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
PHONE 202-344-4019
EMAIL mbharrison@venable.com
DOCKET/REFERENCE NUMBER 37114-434390
ATTORNEY INFORMATION (proposed)
NAME Rebecca A. Liebowitz
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME Venable LLP
STREET P.O. Box 34385
CITY Washington
STATE District of Columbia
POSTAL CODE 20043-9998
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
PHONE 202-344-4976
FAX 202.344.8300
EMAIL trademarkdocket@venable.com
DOCKET/REFERENCE NUMBER 37114-434390
OTHER APPOINTED ATTORNEY Andrew Price, Halle Markus, Kristen Ruisi, Steven Powell, Marjorie Norman, Catherine Mitros, Paula Hopkins, Sean Phelan, Michael Hirsch, Kelly Williams
CORRESPONDENCE INFORMATION (current)
NAME Rebecca A. Liebowitz
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarkdocket@venable.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) rliebowitz@venable.com; klwilliams@venable.com
CORRESPONDENCE INFORMATION (proposed)
NAME Rebecca A. Liebowitz
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarkdocket@venable.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) rliebowitz@venable.com
DOCKET/REFERENCE NUMBER 37114-434390
SIGNATURE SECTION
RESPONSE SIGNATURE /rebecca liebowitz/
SIGNATORY'S NAME Rebecca Liebowitz
SIGNATORY'S POSITION Applicant's Attorney, DC/VA bar member
SIGNATORY'S PHONE NUMBER 202.344.4976
DATE SIGNED 06/12/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Jun 12 18:58:59 ET 2020
TEAS STAMP USPTO/RSI-XXX.XXX.XX.XXX-
20200612185859053796-8805
3432-710613c7fee96404cef5
96058ab21d97428883059e7ab
6d58876e2a2b782a435f9-N/A
-N/A-20200612185255434087



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. 88053432 THE HUMAN FIX TO HUMAN RISK(Standard Characters, see http://uspto.report/TM/88053432/mark.png) has been amended as follows:
FOREIGN APPLICATION(S)
The foreign application(s) No(s). 1909170 being used as the basis for a priority claim under Section 44(d) of the Trademark Act has/have not yet matured into a registration in the applicant's country of origin. I hereby request that the application be re-suspended.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for (Based on 44(d) Priority Application) (Based on Intent to Use) Educational services, namely, providing courses and training namely, online courses and online training in the field of information security; safekeeping of personal information and organization privacy; training in the field of detecting and preventing computer and website security vulnerabilities; educational courses and training in the fields of computer information security awareness, regulatory compliance, business continuity management and sustainable development
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 1909170 filed 07/17/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: (Based on 44(d) Priority Application) (Based on Intent to Use) Educational services, namely, providing courses and training namely, online courses and online training in the field of information security; Educational services, namely, providing courses and training namely, online courses and online training in the field of information security, safekeeping of personal information and organization privacy; safekeeping of personal information and organization privacy; training in the field of detecting and preventing computer and website security vulnerabilities; educational courses and training in the fields of computer information security awareness, regulatory compliance, business continuity management and sustainable developmentClass 041 for Educational services, namely, providing courses and training namely, online courses and online training in the field of information security, safekeeping of personal information and organization privacy; training in the field of detecting and preventing computer and website security vulnerabilities; educational courses and training in the fields of computer information security awareness, regulatory compliance, business continuity management and sustainable development
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 1909170 filed 07/17/2018]. 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.


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Terranova Worldwide Corporation a(n) Quebec corporation, legally organized under the laws of Canada, having an address of
      102-1545 Boul De l'Avenir
      Laval, Quebec, H7S2N5
      Canada
Proposed: Terranova Worldwide Corporation, Quebec corporation legally organized under the laws of Canada, having an address of
      102-1545 Boul De l'Avenir
      Laval, Quebec, H7S2N5
      Canada
      Email Address: XXXX

The owner's/holder's current attorney information: Rebecca A. Liebowitz. Rebecca A. Liebowitz of Venable LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. Box 34385
      Washington, District of Columbia
      United States
The docket/reference number is 37114-434390.

The phone number is 202-344-4019.

The email address is mbharrison@venable.com

The owner's/holder's proposed attorney information: Rebecca A. Liebowitz. Other appointed attorneys are Andrew Price, Halle Markus, Kristen Ruisi, Steven Powell, Marjorie Norman, Catherine Mitros, Paula Hopkins, Sean Phelan, Michael Hirsch, Kelly Williams. Rebecca A. Liebowitz 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

      P.O. Box 34385
      Washington, District of Columbia 20043-9998
      United States
The docket/reference number is 37114-434390.

The phone number is 202-344-4976.

The fax number is 202.344.8300.

The email address is trademarkdocket@venable.com

Rebecca A. Liebowitz 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):
      Rebecca A. Liebowitz
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rliebowitz@venable.com; klwilliams@venable.com
Correspondence Information (proposed):
      Rebecca A. Liebowitz
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rliebowitz@venable.com

The docket/reference number is 37114-434390.

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).

Response Suspension Inquiry Signature
Signature: /rebecca liebowitz/     Date: 06/12/2020
Signatory's Name: Rebecca Liebowitz
Signatory's Position: Applicant's Attorney, DC/VA bar member
Signatory's Phone Number: 202.344.4976

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Rebecca A. Liebowitz
   Venable LLP
   
   P.O. Box 34385
   Washington, District of Columbia
Mailing Address:    Rebecca A. Liebowitz
   Venable LLP
   P.O. Box 34385
   Washington, District of Columbia 20043-9998
        
Serial Number: 88053432
Internet Transmission Date: Fri Jun 12 18:58:59 ET 2020
TEAS Stamp: USPTO/RSI-XXX.XXX.XX.XXX-202006121858590
53796-88053432-710613c7fee96404cef596058
ab21d97428883059e7ab6d58876e2a2b782a435f
9-N/A-N/A-20200612185255434087



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