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. 88201376 FAMILY CONNECTS (Stylized and/or with Design, see http://uspto.report/TM/88201376/mark.png) 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 in the nature of Argument: Response to Office Action has been attached.
Original PDF file:
evi_661941746-20190903102404193088_._response_to_Office_Action_-_family_connects.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for providing information about supporting newborns and their families
Original Filing Basis:
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; 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 agenciesClass 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.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for consulting services related to the implementation of a model for supporting newborns and their families
Original Filing Basis:
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; 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 agenciesClass 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.
Applicant hereby submits one(or more) specimen(s) for Class 044 . The specimen(s) submitted consists of image of mark used in connection with 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:
SPU1-661941746-20190903102404193088_._Family_Connects_Class_44_Specimen.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

The applicant's current attorney information: William B. Cannon. William B. Cannon of PARKER POE ADAMS & BERNSTEIN LLP, is located at

      301 FAYETTEVILLE STREET, SUITE 1400
      RALEIGH, North Carolina 27601
      US
The docket/reference number is 161204.

The phone number is 919-828-0564.

The fax number is 919-834-4564.

The email address is trademarks@parkerpoe.com

The applicants proposed attorney information: William B. Cannon. Other appointed attorneys are Christopher M. Thomas, Frank E. Silber, Joshua J. Morales, Timothy D. St. Clair, Amy A. Hinson, Michael E. Hall. William B. Cannon of Parker Poe Adams & Bernstein 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

      301 Fayetteville Street, Suite 1400
      Raleigh, North Carolina 27601
      United States
The docket/reference number is 29836-00023.

The phone number is 919-828-0564.

The email address is trademarks@parkerpoe.com

William B. Cannon 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.
The applicant's current correspondence information: WILLIAM B. CANNON. WILLIAM B. CANNON of PARKER POE ADAMS & BERNSTEIN LLP, is located at

      301 FAYETTEVILLE STREET, SUITE 1400
      RALEIGH, North Carolina 27601
      US
The docket/reference number is 161204.

The phone number is 919-828-0564.

The fax number is 919-834-4564.

The email address is trademarks@parkerpoe.com

The applicants proposed correspondence information: William B. Cannon. William B. Cannon of Parker Poe Adams & Bernstein LLP, is located at

      301 Fayetteville Street, Suite 1400
      Raleigh, North Carolina 27601
      United States
The docket/reference number is 29836-00023.

The phone number is 919-828-0564.

The email address is trademarks@parkerpoe.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use FAMILY apart from the mark as shown.


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: 09/03/2019
Signatory's Name: William B. Cannon
Signatory's Position: Attorney of Record, NC bar member
Signatory's Phone Number: 919.828.0564


Response Signature
Signature: /William B. Cannon/     Date: 09/03/2019
Signatory's Name: William B. Cannon
Signatory's Position: Attorney of Record, NC bar member

Signatory's Phone Number: 919.828.0564

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:    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: Tue Sep 03 10:41:31 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190903104131214
667-88201376-610983e5ff5f773802e3b965139
bbba27325915dec9ca51fda5ad65a28e8db9aaf-
N/A-N/A-20190903102404193088