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 09/20/2020)

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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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88145785 THE STANDARD (Stylized and/or with Design, see http://uspto.report/TM/88145785/mark.png) has been amended as follows:

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

The Office Action of November 01, 2018 has been received and its contents have been carefully noted.  Applicant submits that the refusal to register based on Section 2(d), relating to the cited registrations, should be withdrawn because Applicant has priority of use and owns prior federal registrations, such as U.S. Reg. Nos. 2,293,007; 2,272,545 and 3,830,438.   In addition, Applicant hereby amends its description of services to "Real estate development services, namely, the development of hotel condominium properties, within hotels."  

If the Examining Attorney intends to maintain the preliminary refusal to register, Applicant requests that prosecution be suspended in light the Examining Attorney's citation to the prior-filed application Ser. No. 87/845,444.

Respectfully submitted

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Real estate development services, namely, the development of hotel condominium properties
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Real estate development services, namely, the development of hotel condominium properties; Real estate development services, namely, the development of hotel condominium properties, within hotelsClass 037 for Real estate development services, namely, the development of hotel condominium properties, within hotels
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.

SIGNATURE(S)
Response Signature
Signature: /Christopher M. Dolan/     Date: 05/01/2019
Signatory's Name: Christopher M. Dolan
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312 357-1313

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: 88145785
Internet Transmission Date: Wed May 01 20:22:03 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190501202203547
208-88145785-6207c30d9b384d9e28afcb8fb26
18e21d4622f8f3a43211be1e859c5937f2a39-N/
A-N/A-20190501200804955951