Response to Office Action

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 09/30/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88098313 DANDELION(Standard Characters, see http://uspto.report/TM/88098313/mark.png) has been amended as follows:

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

Regarding the partial likelihood of confusion refusal based on Registration No. 5683717, there would be no likelihood of confusion based on the differences in the marks in combination with differences in goods/services (as now amended in this application). Specifically, the applicant has amended all goods/services in its application upon which this refusal was issued, to narrow them to specific fields that are distinct from those in this cited registration. In addition to differences in the goods/services, the applicant's mark DANDELION evokes a plant, whereas the dominant element "DANDY LION" in the cited registration evokes a stylish lion (animal). The combination of differences in marks and differences in goods/services results in no likelihood of confusion.

Regarding the partial likelihood of confusion refusal based on Registration No. 4596260, the Section 8 Declaration was due to be filed for such cited registration by September 2, 2020; and has not been filed to date. This cited registration is now in the grace period for filing the Section 8 Declaration. Pursuant to TMEP 716.02(e), the applicant would prefer not to present arguments at this time, and instead requests suspension of the application pending potential expiration of this cited registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable publications and instructional materials

Proposed:

Tracked Text Description: Downloadable publications and instructional materials; Downloadable electronic publications in the nature of articles, reports, and guides in the fields of skills training and employment of neurodiverse individuals; Downloadable electronic instructional materials in the fields of skills training and employment of neurodiverse individualsClass 009 for Downloadable electronic publications in the nature of articles, reports, and guides in the fields of skills training and employment of neurodiverse individuals; Downloadable electronic instructional materials in the fields of skills training and employment of neurodiverse individuals
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). 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 the use of the mark in commerce as of the application 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. The mark was first used at least as early as 02/00/2017 and first used in commerce at least as early as 02/00/2017 , and is now in use in such commerce.
In International Class 009, the mark was first used at least as early as 02/00/2017 and first used in commerce at least as early as 02/00/2017.

Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of downloadable electronic publication.
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-991178158-2020100516 3237913493_._Class_9_Spec imen_of_Use_-_DANDELION.pdf
Converted PDF file(s) ( 8 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8

Applicant proposes to amend the following:

Current:
Class 016 for Printed publications and instructional materials

Proposed:

Tracked Text Description: Printed publications and instructional materials; Printed publications, namely, articles, reports, and guides in the fields of skills training and employment of neurodiverse individuals; Printed instructional materials in the fields of skills training and employment of neurodiverse individualsClass 016 for Printed publications, namely, articles, reports, and guides in the fields of skills training and employment of neurodiverse individuals; Printed instructional materials in the fields of skills training and employment of neurodiverse individuals
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:

Current:
Class 035 for Promoting public awareness of autism spectrum and other neurodevelopmental disorders; Personnel placement and recruiting; Testing to determine employment skills; Providing employment information; Providing networking opportunities for individuals seeking employment; Internship placement services; Information, consultancy and advisory services relating to all the foregoing services; Employment staffing consultation services

Proposed:

Tracked Text Description: Promoting public awareness of autism spectrum and other neurodevelopmental disorders; (Based on use in commerce) Promoting public awareness of autism spectrum disorders; Employment staffing consultation services; (Based on intent to use) Promoting public awareness of other neurodevelopmental disorders; Personnel placement and recruiting; Testing to determine employment skills; Providing employment information; Providing networking opportunities for individuals seeking employment; Internship placement services; Information, consultancy and advisory services relating to all the foregoing servicesClass 035 for (Based on use in commerce) Promoting public awareness of autism spectrum disorders; Employment staffing consultation services; (Based on intent to use) Promoting public awareness of other neurodevelopmental disorders; Personnel placement and recruiting; Testing to determine employment skills; Providing employment information; Providing networking opportunities for individuals seeking employment; Internship placement services; Information, consultancy and advisory services relating to all the foregoing services
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.

Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). 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 the use of the mark in commerce as of the application 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. The mark was first used at least as early as 00/00/2014 and first used in commerce at least as early as 00/00/2014 , and is now in use in such commerce.
In International Class 035, the mark was first used at least as early as 00/00/2014 and first used in commerce at least as early as 00/00/2014.

Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of archived web page (archived August 23, 2018) for the services and displaying the mark.
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU2-991178158-2020100516 3237913493_._DANDELION_-_ Class_35_specimen.pdf
Converted PDF file(s) ( 5 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5

Applicant proposes to amend the following:

Current:
Class 041 for Training; Education services; Mentoring services; Information, consultancy and advisory services relating to all the foregoing services; Providing on-line non-downloadable publications and instructional materials

Proposed:

Tracked Text Description: Training; Training services in the fields of job skills, information technology, life skills, and well-being; Education services; Training services for employers in the field of hiring and working with neurodiverse employees; Mentoring services; Mentoring services in the fields of job skills and employment, information technology, life skills, well-being, and working in the workforce as a neurodiverse individual; Information, consultancy and advisory services relating to all the foregoing services; Providing on-line non-downloadable publications and instructional materials; Providing on-line non-downloadable publications in the nature of articles in the fields of skills training and employment of neurodiverse individuals; Providing on-line non-downloadable instructional materials in the fields of skills training and employment of neurodiverse individualsClass 041 for Training services in the fields of job skills, information technology, life skills, and well-being; Training services for employers in the field of hiring and working with neurodiverse employees; Mentoring services in the fields of job skills and employment, information technology, life skills, well-being, and working in the workforce as a neurodiverse individual; Information, consultancy and advisory services relating to all the foregoing services; Providing on-line non-downloadable publications in the nature of articles in the fields of skills training and employment of neurodiverse individuals; Providing on-line non-downloadable instructional materials in the fields of skills training and employment of neurodiverse individuals
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:

Current:
Class 042 for Research services; Development of computer software; Computer code conversion for others; IT consulting services; Testing of computer software; Computer security consultancy and assessments; Computer security threat analysis for protecting data; Computer and technical support services, namely, troubleshooting of computer software problems; Data migration services

Proposed:

Tracked Text Description: Research services; Scientific research services in the field of autism and neurodiversity; Development of computer software; Computer code conversion for others; IT consulting services; Testing of computer software; Computer security consultancy and assessments; Computer security threat analysis for protecting data; Computer and technical support services, namely, troubleshooting of computer software problems; Data migration servicesClass 042 for Scientific research services in the field of autism and neurodiversity; Development of computer software; Computer code conversion for others; IT consulting services; Testing of computer software; Computer security consultancy and assessments; Computer security threat analysis for protecting data; Computer and technical support services, namely, troubleshooting of computer software problems; Data migration services
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Ent. Services Australia Pty Ltd a(n) proprietary limited company (p/l or pty. ltd.), legally organized under the laws of Australia, having an address of
      26-38 Talavera Road
      Macquarie Park, NSW, 2113
      Australia

Proposed: DXC Enterprise Australia Pty Ltd, proprietary limited company (p/l or pty. ltd.) legally organized under the laws of Australia, having an address of
      26-38 Talavera Road
      Macquarie Park, NSW, 2113
      Australia
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
Pursuant to TMEP 903.08, the dates of first use for Class 35 pertain to: "Promoting public awareness of autism spectrum disorders"


The owner's/holder's current attorney information: Charles G. Zug. Charles G. Zug of NELSON MULLINS RILEY & SCARBOROUGH LLP, is located at

      23RD FLOOR, IP DEPARTMENT
      301 S. COLLEGE ST.
      CHARLOTTE, North Carolina 28202
      United States
The docket/reference number is 016132/10274.
      The phone number is 803-799-2000.
      The fax number is 803-255-9831.
      The email address is ip@nelsonmullins.com

The owner's/holder's proposed attorney information: Charles G. Zug. Other appointed attorneys are Mark C. Dukes, John C. McElwaine, Christopher D. Casavale, Lauren G. Hunstad. Charles G. Zug of NELSON MULLINS RILEY & SCARBOROUGH 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

      Suite 2300, IP Department
      301 S. COLLEGE ST.
      CHARLOTTE, North Carolina 28202
      United States
The docket/reference number is 016132/10274.
      The phone number is 803-799-2000.
      The fax number is 803-255-9831.
      The email address is ip@nelsonmullins.com

Charles G. Zug 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):
      CHARLES G. ZUG
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@nelsonmullins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): geordie.zug@nelsonmullins.com

The docket/reference number is 016132/10274.
Correspondence Information (proposed):
      Charles G. Zug
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@nelsonmullins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): geordie.zug@nelsonmullins.com

The docket/reference number is 016132/10274.

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

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: /George Majewski/      Date: 10/05/2020
Signatory's Name: George Majewski
Signatory's Position: Director, Global Mergers & Acquisitions and Corporate IP, DXC Technology Company
Signatory's Phone Number: xxxxxxx


Response Signature
Signature: /cgz/     Date: 10/05/2020
Signatory's Name: Charles G. Zug
Signatory's Position: Attorney of record

Signatory's Phone Number: 803-799-2000

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:    CHARLES G. ZUG
   NELSON MULLINS RILEY & SCARBOROUGH LLP
   23RD FLOOR, IP DEPARTMENT
   301 S. COLLEGE ST.
   CHARLOTTE, North Carolina 28202
Mailing Address:    Charles G. Zug
   NELSON MULLINS RILEY & SCARBOROUGH LLP
   Suite 2300, IP Department
   301 S. COLLEGE ST.
   CHARLOTTE, North Carolina 28202
        
Serial Number: 88098313
Internet Transmission Date: Mon Oct 05 17:18:41 ET 2020
TEAS Stamp: USPTO/ROA-XX.X.XXX.XXX-20201005171841339
259-88098313-750e94c6ff06add17df8d51d620
bcab3f56d7a64ca2c65794e4ab8aed264666-N/A
-N/A-20201005163237913493