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. 88201380 FAMILY CONNECTS INTERNATIONAL(Standard Characters, see http://uspto.report/TM/88201380/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 has been attached: (1) Response to Office Action; and (2) Consent to Use Agreement
Original PDF file:
evi_661941746-20200313145 342311427_._Response_to_O ffice_Action_FAMILY_CONNE CTS_INTERNATIONAL.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_661941746-20200313145 342311427_._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 09/12/2018 and first used in commerce at least as early as 09/12/2018 , 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 09/12/2018 and first used in commerce at least as early as 09/12/2018 , 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 09/12/2018 and first used in commerce at least as early as 09/12/2018 , 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 09/12/2018 and first used in commerce at least as early as 09/12/2018 , and is now in use in such commerce.
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)
Request for Reconsideration Signature
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

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: 88201380
Internet Transmission Date: Mon Mar 16 09:43:02 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XX.XX-20200316094302963
492-88201380-7102147248dcec4762f629ce94f
25dd477751bebd126235eb2ea1b4fcc9757d4-N/
A-N/A-20200313145342311427