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 |
88059518 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 117 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88059518/mark.png |
| LITERAL ELEMENT |
ALBAN |
| 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) |
|
Duke University ("Applicant") respectfully asserts that its ALBAN mark when used in connection with book publishing and educational services for church congregations involving operational,
business, and spiritual programming is unlikely to be confused with ST. ALBANS when used in connection with schools and camps for kids.
The marks look and sound different and convey distinctive commercial impressions. The cited mark begins with the letters "ST" which is read "SAINT", has three syllables, is pluralized, and
directly references the first British martyr from the 4th century. On the other hand, ALBAN does not start with the letters ST, does not start with the sound SAINT, has two syllables, is
singular, and does not explicitly identify a saint.
The services are similarly distinguishable. Consumers who seek a book publisher under the ALBAN publishing brand or encounter educational services targeted to churchwide congregations
under the ALBAN brand are unlikely to assume that those services originate from the same source as a 585-student, all-boy, prep school doing business as ST. ALBANS and offering swimming and tennis
club services and camps. These services would be offered in different trade channels and advertised to different customers.
For the reasons set forth above, Applicant respectfully requests that the Examining Attorney withdraw the refusal and approve the mark for publication.
|
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
041 |
| DESCRIPTION |
| Publication of books, research reports and workbooks; educational research and 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 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 field(s) of religion,
ministry, and church leadership; Providing on-line newsletters in the field of religion, ministry, and church leadership |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 12/31/1974 |
| FIRST USE IN COMMERCE DATE |
At least as early as 12/31/1974 |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
041 |
| TRACKED TEXT DESCRIPTION |
Publication of books, research reports and workbooks; educational research and
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 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; 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 field(s) of religion, ministry, and church leadership; 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 |
| FINAL DESCRIPTION |
| 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 |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 12/31/1974 |
| FIRST USE IN COMMERCE DATE |
At least as early as 12/31/1974 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/William B. Cannon/ |
| SIGNATORY'S NAME |
William B. Cannon |
| SIGNATORY'S POSITION |
Attorney of Record - NC Bar Member |
| SIGNATORY'S PHONE NUMBER |
919.835.4654 |
| DATE SIGNED |
04/15/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Apr 15 16:39:22 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
190415163922903579-880595
18-620e789a3a1d6980a8c470
10da253490e55eeb91c4a14b3
2bd1074f02670c4e1c0-N/A-N
/A-20190415161749103438 |
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.
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:
Duke University ("Applicant") respectfully asserts that its ALBAN mark when used in connection with book publishing and educational services for church congregations involving operational,
business, and spiritual programming is unlikely to be confused with ST. ALBANS when used in connection with schools and camps for kids.
The marks look and sound different and convey distinctive commercial impressions. The cited mark begins with the letters "ST" which is read "SAINT", has three syllables, is pluralized, and
directly references the first British martyr from the 4th century. On the other hand, ALBAN does not start with the letters ST, does not start with the sound SAINT, has two syllables, is
singular, and does not explicitly identify a saint.
The services are similarly distinguishable. Consumers who seek a book publisher under the ALBAN publishing brand or encounter educational services targeted to churchwide congregations
under the ALBAN brand are unlikely to assume that those services originate from the same source as a 585-student, all-boy, prep school doing business as ST. ALBANS and offering swimming and tennis
club services and camps. These services would be offered in different trade channels and advertised to different customers.
For the reasons set forth above, Applicant respectfully requests that the Examining Attorney withdraw the refusal and approve the mark for publication.
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 research and 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 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 field(s) 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;
educational research and 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
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;
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 field(s) of religion, ministry, and church leadership;
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; 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
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.
SIGNATURE(S)
Response Signature
Signature: /William B. Cannon/ Date: 04/15/2019
Signatory's Name: William B. Cannon
Signatory's Position: Attorney of Record - NC Bar Member
Signatory's Phone Number: 919.835.4654
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: 88059518
Internet Transmission Date: Mon Apr 15 16:39:22 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190415163922903
579-88059518-620e789a3a1d6980a8c47010da2
53490e55eeb91c4a14b32bd1074f02670c4e1c0-
N/A-N/A-20190415161749103438