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. 88206124 GAB'S PYRAMID(Standard Characters, see http://uspto.report/TM/88206124/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Business consultation; business efficiency advice in the nature of providing a methodology to maximize the internal and external communication of a business and a methodology for structuring business information
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1930463 filed 11/14/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Business consultation; business efficiency advice in the nature of providing a methodology to maximize the internal and external communication of a business and a methodology for structuring business information; business efficiency advice which employs a methodology to maximize the internal and external communication of a business and a methodology for structuring business informationClass 042 for Business consultation; business efficiency advice which employs a methodology to maximize the internal and external communication of a business and a methodology for structuring business information
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1930463 filed 11/14/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Jess M. Collen. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      US
The docket/reference number is X985.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

The applicants proposed attorney information: Jess M. Collen. Other appointed attorneys are Audra Kemp. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      United States
The docket/reference number is X985.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

Jess M. Collen 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: JESS M. COLLEN. JESS M. COLLEN of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      US
The docket/reference number is X985.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com; tmcollen@collenip.com

The applicants proposed correspondence information: Jess M. Collen. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      United States
The docket/reference number is X985.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com; tmcollen@collenip.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner has required a disclaimer of the word PYRAMID in the mark. Applicant respectfully disagrees that a disclaimer is necessary. The mark should not be separated for purposes of finding descriptiveness in the abstract. The mark is a unitary term. Under TMEP Section 1213.05, the commercial impression created by the terms in the mark is "so merged together that [the words] cannot be divided to be regarded as separable elements." The mark does not immediately convey to the purchaser the nature of Applicant's goods and services, which are business consultation, business advice, and related publications. The mark conveys an aspect of Applicant's unique presentation of its goods and services. The word PYRAMID in the mark modifies the adjacent word, GAB'S. The mark creates a distinctive meaning that indicates the source of the goods and services offered under the mark. The terms in the mark are just as arbitrary with respect to business consultancy and advice as any other mark comprising the term for a three-dimensional geometric shape, such as: THE CONE (Registration No. 4612454), INTEGRATED CUBE (Registration No. 5659298), CYLNDR (Registration No. 5559611), or DIGITAL HELIX (Registration No. 5328504), all for business-related services. Since the mark is arbitrary with respect to Applicant's goods and services, and is intended to be viewed as a whole in order to indicate the source of the goods to the purchasing public, Applicant respectfully requests that the Examiner withdraw the disclaimer requirement. Applicant maintains the dual bases of this application and respectfully requests suspension of its application pending receipt of the home registration certificate.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_711254634-132830727_._X985_executed_Declaration_in_Support_of_Application_181204.PDF
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: [signed]
Signatory's Position: [signed]

Response Signature
Signature: /audra kemp/     Date: 08/22/2019
Signatory's Name: Audra Kemp
Signatory's Position: Senior Associate Attorney, Collen IP, NY State Bar member

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:    JESS M. COLLEN
   COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C.
   THE HOLYOKE-MANHATTAN BUILDING
   80 SOUTH HIGHLAND AVENUE
   OSSINING, New York 10562
Mailing Address:    Jess M. Collen
   COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C.
   THE HOLYOKE-MANHATTAN BUILDING
   80 SOUTH HIGHLAND AVENUE
   OSSINING, New York 10562
        
Serial Number: 88206124
Internet Transmission Date: Thu Aug 22 13:38:37 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190822133837750
523-88206124-6105ce375a6e9bc1a5346a62537
69e9b8b9b7331eac8b369b78976c81561f51621-
N/A-N/A-20190822132830727339