TEAS Response to Suspension Inquiry

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)

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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 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. 88120278 ALADDIN(Standard Characters, see http://uspto.report/TM/88120278/mark.png) has been amended as follows:
CANCELLATION PROCEEDING(S)
Cancellation No(s). 92073886, 92073922 is/are still pending. However, the applicant hereby requests removal of this application from suspension for the examining attorney to consider a submission, such as an amendment or consent agreement.
Comment(s)/Remark(s):

Applicant is hereby resubmitting the Response to Suspension Inquiry or Letter of Suspension because upon review Applicant noted the Response submitted on June 10, 2020, failed to include Applicant's amendment to its services. Regarding Cancellation No. 92073922, Registrant BlackRock, Inc. ("BlackRock") is filing an amendment with Applicant's consent with the Trademark Trial and Appeal Board to amend the identification of services in its U.S. Service Mark Registration Nos. 5,425,331 and 5,425,332 for the cited marks ALADDIN PORTFOLIO BUILDER and ALADDIN RISK MONITOR, respectfully, as follows: "providing information and analysis relating to economic market data; providing business and market research services to individual and institutional financial investors and financial professionals; business management consultation, not in connection with food-contract management; market analysis, not in connection with food-contract management." Upon entry of BlackRock's amendment and Applicant's amendment submitted herewith, Applicant respectfully submits that there is no likelihood of confusion between Applicant's use and registration of its ALADDIN mark and the cited marks ALADDIN PORTFOLIO BUILDER and ALADDIN RISK MONITOR for several reasons. First, Applicant's services, as amended herein, are distinctly and starkly dissimilar when compared to BlackRock's foregoing services, as amended. Applicant's services and the BlackRock's services are marketed to different consumers in different fields of use through different channels of trade and under entirely different marketing conditions. Additionally, the differences in the appearance, sound, connotation, and commercial impression between the respective marks are sufficient to distinguish Applicant's ALADDIN mark from the cited ALADDIN PORTFOLIO BUILDER and ALADDIN RISK MONITOR marks such that no likelihood of confusion exists. Based on the foregoing, Applicant respectfully requests that the Examining Attorney give this matter favorable reconsideration and withdraw the refusal to register Applicant's ALADDIN mark based on the cited ALADDIN PORTFOLIO BUILDER and ALADDIN RISK MONITOR marks.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for customer relationship management; customer service management for others; business project management services; personnel management consultancy; business consulting, management, planning and supervision; advertising and business management consultancy; advice in the field of business management and marketing
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)).

Proposed:
Tracked Text Description: customer relationship management; customer service management for others; business project management services; personnel management consultancy; business consulting, management, planning and supervision; advertising and business management consultancy; advice in the field of business management and marketing; none of the foregoing for use in the financial services industry.Class 035 for customer relationship management; customer service management for others; business project management services; personnel management consultancy; business consulting, management, planning and supervision; advertising and business management consultancy; advice in the field of business management and marketing; none of the foregoing for use in the financial services industry.
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)).

Correspondence Information (current):
      Henry B. Ward, III
      PRIMARY EMAIL FOR CORRESPONDENCE: CLT-TMCorrespondence@mvalaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): iplaw@mvalaw.com

The docket/reference number is 043843.77.
Correspondence Information (proposed):
      Henry B. Ward, III
      PRIMARY EMAIL FOR CORRESPONDENCE: CLT-TMCorrespondence@mvalaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): iplaw@mvalaw.com

The docket/reference number is 043843.77.

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: /hbw/     Date: 06/11/2020
Signatory's Name: Ward, III, Henry B.
Signatory's Position: Attorney of Record, North Carolina Bar Member
Signatory's Phone Number: 704-331-1027

Mailing Address:    Henry B. Ward, III
   MOORE & VAN ALLEN PLLC
   
   100 NORTH TRYON STREET, SUITE 4700
   CHARLOTTE, North Carolina
Mailing Address:    Henry B. Ward, III
   MOORE & VAN ALLEN PLLC
   100 NORTH TRYON STREET, SUITE 4700
   CHARLOTTE, North Carolina 28202
        
Serial Number: 88120278
Internet Transmission Date: Thu Jun 11 18:01:07 ET 2020
TEAS Stamp: USPTO/RSI-XXX.XXX.XX.XXX-202006111801076
37164-88120278-7105338cbab96fc5416584c55
e0426ce6701268c7e576237bf3901a8672f8c620
b2-N/A-N/A-20200611171334298339