TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88059518 ALBAN(Standard Characters, see http://uspto.report/TM/88059518/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of (1) Response to Office Action; (2) Consent to Registration and Use has been attached.
Original PDF file:
evi_661941746-20200116095247374008_._Response_to_Office_Action_Alban_88059518.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_661941746-20200116095247374008_._CF_-_Alban_Disambiguation_Agreement_Duke_Trademark_1.10.2020.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Publication of books, research reports and workbooks; educational services, namely conducting classes, seminars and workshops for religious congregations in the fields of management techniques, ministry, leadership, stewardship, planning, and spirituality, and distributing educational materials in connection therewith; publishing books in the field of religion; book publishing; Providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of religion, ministry, and church leadership; Providing on-line newsletters in the field of religion, ministry, and church leadership
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 12/31/1974 and first used in commerce at least as early as 12/31/1974 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Publication of books, research reports and workbooks; Publication of books, research reports and workbooks (but excluding books, research reports and workbooks for primary and secondary school students); educational services, namely conducting classes, seminars and workshops for religious congregations in the fields of management techniques, ministry, leadership, stewardship, planning, and spirituality, and distributing educational materials in connection therewith; educational services, namely conducting classes, seminars and workshops for religious congregations in the fields of management techniques, ministry, leadership, stewardship, planning, and spirituality, and distributing educational materials in connection therewith (but excluding educational services for primary and secondary school students); publishing books in the field of religion; publishing books in the field of religion (but excluding books in the field of religion for primary and secondary school students); book publishing; book publishing (but excluding book publishing for primary and secondary school students); Providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of religion, ministry, and church leadership; Providing on-line newsletters in the field of religion, ministry, and church leadershipClass 041 for Publication of books, research reports and workbooks (but excluding books, research reports and workbooks for primary and secondary school students); educational services, namely conducting classes, seminars and workshops for religious congregations in the fields of management techniques, ministry, leadership, stewardship, planning, and spirituality, and distributing educational materials in connection therewith (but excluding educational services for primary and secondary school students); publishing books in the field of religion (but excluding books in the field of religion for primary and secondary school students); book publishing (but excluding book publishing for primary and secondary school students); Providing a website featuring blogs and non-downloadable publications in the nature of articles in the fields of religion, ministry, and church leadership; Providing on-line newsletters in the field of religion, ministry, and church leadership
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 12/31/1974 and first used in commerce at least as early as 12/31/1974 , and is now in use in such commerce.
The applicant's current attorney information: William B. Cannon. William B. Cannon of PARKER POE ADAMS & BERNSTEIN LLP, is located at

      301 FAYETTEVILLE STREET, SUITE 1400
      RALEIGH, North Carolina 27601
      US
The docket/reference number is 160822.

The phone number is 919-828-0564.

The email address is trademarks@parkerpoe.com

The applicants proposed attorney information: William B. Cannon. Other appointed attorneys are Christopher M. Thomas, Joshua J. Morales, Timothy D. St. Clair, Amy A. Hinson, Michael E. Hall, Sloan Carpenter. William B. Cannon of Parker Poe Adams & Bernstein 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

      301 Fayetteville Street, Suite 1400
      Raleigh, North Carolina 27601
      United States
The docket/reference number is 29836-00021.

The phone number is 919-828-0564.

The email address is trademarks@parkerpoe.com

William B. Cannon 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: WILLIAM B. CANNON. WILLIAM B. CANNON of PARKER POE ADAMS & BERNSTEIN LLP, is located at

      301 FAYETTEVILLE STREET, SUITE 1400
      RALEIGH, North Carolina 27601
      US
The docket/reference number is 160822.

The phone number is 919-828-0564.

The email address is trademarks@parkerpoe.com

The applicants proposed correspondence information: William B. Cannon. William B. Cannon of Parker Poe Adams & Bernstein LLP, is located at

      301 Fayetteville Street, Suite 1400
      Raleigh, North Carolina 27601
      United States
The docket/reference number is 29836-00021.

The phone number is 919-828-0564.

The email address is trademarks@parkerpoe.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /William B. Cannon/     Date: 01/16/2020
Signatory's Name: William B. Cannon
Signatory's Position: Attorney of Record, NC bar member

Signatory's Phone Number: 9198280564

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    WILLIAM B. CANNON
   PARKER POE ADAMS & BERNSTEIN LLP
   
   301 FAYETTEVILLE STREET, SUITE 1400
   RALEIGH, North Carolina 27601
Mailing Address:    William B. Cannon
   Parker Poe Adams & Bernstein LLP
   301 Fayetteville Street, Suite 1400
   Raleigh, North Carolina 27601
        
Serial Number: 88059518
Internet Transmission Date: Thu Jan 16 10:45:50 EST 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XX.XX-20200116104550942
966-88059518-700da3f83a5512feade43abf843
077677119f9a43068d721bdff5dda3af6eeaa-N/
A-N/A-20200116095247374008