TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88201376 FAMILY CONNECTS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8820137 6/large) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: (1) Response to Office Action; and (2) Consent to Use Agreement
Original PDF file:
evi_661941746-20200313143 618738517_._Response_to_O ffice_Action_FAMILY_CONNE CTS.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_661941746-20200313143 618738517_._FamilyConnect s_Consent_to_Use_Agmt.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for providing information about supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies
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 10/16/2018 and first used in commerce at least as early as 10/16/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: providing information about supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies; Providing information about supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies, namely, coordinating nurse home visits for families with newborns, assessing newborn and maternal health, and facilitating relationships between new parents and community resources regarding family healthClass 035 for Providing information about supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies, namely, coordinating nurse home visits for families with newborns, assessing newborn and maternal health, and facilitating relationships between new parents and community resources regarding family health
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 10/16/2018 and first used in commerce at least as early as 10/16/2018 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 044 for consulting services related to the implementation of a model for supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies
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 10/16/2018 and first used in commerce at least as early as 10/16/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: consulting services related to the implementation of a model for supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies; Consulting services related to the implementation of a model for supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies, namely, coordinating nurse home visits for families with newborns, assessing newborn and maternal health, and facilitating relationships between new parents and community resources regarding family healthClass 044 for Consulting services related to the implementation of a model for supporting newborns and their families, namely, best practices, strategies, and tips related to healthcare, parenting, parent mental health, and connections to community agencies, namely, coordinating nurse home visits for families with newborns, assessing newborn and maternal health, and facilitating relationships between new parents and community resources regarding family health
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 10/16/2018 and first used in commerce at least as early as 10/16/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 044. The specimen(s) submitted consists of website screenshots from www.familyconnects.org captured on 3/10/20, showing images of the mark used in connection with the Class 44 services.
"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:
SPU1-661941746-2020031314 3618738517_._Class_44_-_1.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU1-661941746-2020031314 3618738517_._Class_44_-_2.pdf
Converted PDF file(s) ( 1 page) Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Duke University a(n) non-profit corporation, legally organized under the laws of North Carolina, having an address of

            Office of University Counsel      310 Blackwell Street, 4th Floor
      Durham, North Carolina 27701
      United States

Proposed: Duke University, non-profit corporation legally organized under the laws of North Carolina, having an address of
      Office of University Counsel
      310 Blackwell Street, 4th Floor
      Durham, North Carolina 27701
      United States
      Email Address: XXXX
Correspondence Information (current):
      William B. Cannon
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@parkerpoe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 29836-00023.
Correspondence Information (proposed):
      William B. Cannon
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@parkerpoe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 29836-00023.

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: /William B. Cannon/      Date: 03/14/2020
Signatory's Name: William B. Cannon
Signatory's Position: Attorney of Record, NC bar member
Signatory's Phone Number: 9198280564


Request for Reconsideration Signature
Signature: /William B. Cannon/     Date: 03/16/2020
Signatory's Name: William B. Cannon
Signatory's Position: Attorney of Record, NC bar member

Signatory's Phone Number: 9198280564

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    William B. Cannon
   Parker Poe Adams & Bernstein LLP
   
   301 Fayetteville Street, Suite 1400
   Raleigh, North Carolina 27601
Mailing Address:    William B. Cannon
   Parker Poe Adams & Bernstein LLP
   301 Fayetteville Street, Suite 1400
   Raleigh, North Carolina 27601
        
Serial Number: 88201376
Internet Transmission Date: Mon Mar 16 09:46:11 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XX.XX-20200316094611917
047-88201376-7105417e3d4d8e23415e55d8f3a
30292e6c82831e874d5e38e1269dca61644378a9
-N/A-N/A-20200313143618738517