| 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 1771 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88124840 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88124840/mark.png |
| LITERAL ELEMENT | GATEWAY |
| 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. |
| EXPLANATION OF FILING | |
| Applicant requests that the application be amended to an application for restricted registration pursuant to 37 C.F.R. 2.42 and provides the following in support of its right to a concurrent use registration. Applicant is eligible to request a concurrent use registration because Applicant's date of first use (April 16, 2014) is before the filing date of the pending U.S. Trademark Application 88445895 (filed May 24, 2019). TMEP 1207.04(c). Applicant submits the required verified statement in connection with its concurrent use application, including the following information: (1) Applicant uses its mark GATEWAY in connection with behavioral health services in the nature of behavioral therapy services for children with autism spectrum disorders and related developmental disabilities. Applicant use its GATEWAY mark to advertise, promote, and provide its services in various locations throughout the United States, but does not use its mark in the State of California. (2) Applicant is aware of concurrent use of the mark by Gateway Learning Group, Inc. (a California corporation), 1663 Mission Street, Suite 400, San Francisco, California 94103. To the extent of Applicant's knowledge, Gateway Learning Group is using its GATEWAY mark in connection with the following services: IC 041. Educational services, namely, providing workshops and seminars in the field of behavioral therapy treatments for children with autism spectrum disorders and related developmental disabilities; day camp services for children with autism spectrum disorders and related developmental disabilities; Educational training and consulting services provided to schools and educators in the field of behavioral therapy treatment programs for children with autism spectrum disorders and related developmental disabilities. IC 044. Behavioral health services in the nature of behavioral therapy services for children with autism spectrum disorders and related developmental disabilities. Gateway Learning Group filed U.S. Trademark Application 88445895 for GATEWAY for use in connection with these services on May 24, 2019. (3) To the extent of Applicant's knowledge, Gateway Learning Group is using its mark only within the State of California and claims a date of first use as early as December 31, 2005. Applicant seeks to amend its application to a concurrent use application in connection with its identified services in the remainder of the United States, excepting the State of California. Applicant believes Applicant is the owner of the mark and that to the best of Applicant's knowledge and belief, no other person except as specified in the application herein has the right to use the mark in commerce, either in identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive. TMEP 1207.04(d)(i). | |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Applicant requests the application be amended to seek registration subject to concurrent use. |
| ATTORNEY SECTION (current) | |
| NAME | Amy Sullivan Cahill |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | CAHILL IP, PLLC |
| INTERNAL ADDRESS | SUITE B |
| STREET | 6013 BROWNSBORO PARK BOULEVARD |
| CITY | LOUISVILLE |
| STATE | Kentucky |
| POSTAL CODE | 40207 |
| COUNTRY | US |
| PHONE | 502-825-0220 |
| acahill@cahill-ip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RES |
| ATTORNEY SECTION (proposed) | |
| NAME | Amy Sullivan Cahill |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | CAHILL IP, PLLC |
| INTERNAL ADDRESS | SUITE B |
| STREET | 6013 BROWNSBORO PARK BOULEVARD |
| CITY | LOUISVILLE |
| STATE | Kentucky |
| POSTAL CODE | 40207 |
| COUNTRY | United States |
| PHONE | 502-825-0220 |
| acahill@cahill-ip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RES |
| OTHER APPOINTED ATTORNEY | Sallie J. Stevens; Christina I. Ryan |
| CORRESPONDENCE SECTION (current) | |
| NAME | AMY SULLIVAN CAHILL |
| FIRM NAME | CAHILL IP, PLLC |
| INTERNAL ADDRESS | SUITE B |
| STREET | 6013 BROWNSBORO PARK BOULEVARD |
| CITY | LOUISVILLE |
| STATE | Kentucky |
| POSTAL CODE | 40207 |
| COUNTRY | US |
| PHONE | 502-825-0220 |
| acahill@cahill-ip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RES |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Amy Sullivan Cahill |
| FIRM NAME | CAHILL IP, PLLC |
| INTERNAL ADDRESS | SUITE B |
| STREET | 6013 BROWNSBORO PARK BOULEVARD |
| CITY | LOUISVILLE |
| STATE | Kentucky |
| POSTAL CODE | 40207 |
| COUNTRY | United States |
| PHONE | 502-825-0220 |
| acahill@cahill-ip.com; info@cahill-ip.com; cryan@cahill-ip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RES |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /christina i. ryan/ |
| SIGNATORY'S NAME | Christina I. Ryan |
| SIGNATORY'S POSITION | Attorney of record, Kentucky bar member, Cahill IP, PLLC |
| SIGNATORY'S PHONE NUMBER | 5028250220 |
| DATE SIGNED | 08/21/2019 |
| RESPONSE SIGNATURE | /christina i. ryan/ |
| SIGNATORY'S NAME | Christina I. Ryan |
| SIGNATORY'S POSITION | Attorney of Record, Cahill IP, PLLC, Kentucky bar member |
| SIGNATORY'S PHONE NUMBER | 5028250220 |
| DATE SIGNED | 08/21/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 21 13:29:02 EDT 2019 |
| TEAS STAMP | USPTO/PPA-XX.XXX.XXX.XXX- 20190821132902299808-8812 4840-61086a62e963ec048e6b c5125ee5c4a49555032592677 047cd86d77a3e998c58e9-N/A -N/A-20190821132120903470 |
| 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 1771 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
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.