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 09/30/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88206124 |
LAW OFFICE ASSIGNED |
LAW OFFICE 110 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
GAB'S PYRAMID |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
GOODS AND/OR SERVICES SECTION (016) (current) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Printed publications in the nature of newsletters, brochures, pamphlets and posters in the field of business management
methodologies |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 10/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 10/08/2019 |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1930463 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
11/14/2018 |
GOODS AND/OR SERVICES SECTION (016) (proposed) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Printed publications in the nature of newsletters, brochures, pamphlets and posters in the field of business management
methodologies |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1930463 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
11/14/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
DELETED FILING BASIS |
1(a); |
GOODS AND/OR SERVICES SECTION (035) (current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
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(a) |
FIRST USE ANYWHERE DATE |
At least as early as 10/08/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 10/08/2019 |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1930463 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
11/14/2018 |
GOODS AND/OR SERVICES SECTION (035) (proposed) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
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) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1930463 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
11/14/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
DELETED FILING BASIS |
1(a); |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
Applicant requets that the amendment to allege use be withdrawn, and the application be amended from Section 1(a) to Section 1(b). Applicant
further requests that the application be amended to delete reliance on the home registration as a basis for obtaining registration in the U.S. Applicant elects to retain the priority filing date
under 37 C.F.R. §§2.35(b)(3) and (4). Applicant originally claimed dual bases for this application, under Section 44 and Section 1. Applicant requests that the application proceed to publication
based solely on Intent to Use the mark. |
CORRESPONDENCE INFORMATION (current) |
NAME |
Jess M. Collen |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademark@collenip.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
tmcollen@collenip.com |
DOCKET/REFERENCE NUMBER |
X985 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Jess M. Collen |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademark@collenip.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
tmcollen@collenip.com |
DOCKET/REFERENCE NUMBER |
X985 |
SIGNATURE SECTION |
ORIGINAL PDF FILE |
HS_711254634-104624355_._
X985_executed_Declaration _in_Support_of_Applicatio n_181204.PDF |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\061\88206124\xml6\ ROA0002.JPG |
SIGNATORY'S NAME |
Gabriel Tupula |
SIGNATORY'S POSITION |
President |
RESPONSE SIGNATURE |
/audra kemp/ |
SIGNATORY'S NAME |
Audra Kemp |
SIGNATORY'S POSITION |
Senior Associate Attorney, Collen IP, NY State Bar member |
SIGNATORY'S PHONE NUMBER |
9149415668 |
DATE SIGNED |
10/20/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Oct 20 11:07:42 ET 2020 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
201020110742640404-882061
24-7503c15df4834c3e113b25
d467cfe4e9a95e3be2e6ecb07
59a3c1f56f86d5718-N/A-N/A
-20201020104624355928 |
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 09/30/2020) |
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:
Current:
Class 016 for Printed publications in the nature of newsletters, brochures, pamphlets and posters in the field of business management methodologies
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 10/08/2019 and first used in commerce at least as early as 10/08/2019 , and
is now in use in such commerce.
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:
Class 016 for Printed publications in the nature of newsletters, brochures, pamphlets and posters in the field of business management methodologies
Deleted Filing Basis: 1(a)
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 has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following:
Current:
Class 035 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(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 10/08/2019 and first used in commerce at least as early as 10/08/2019 , and
is now in use in such commerce.
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:
Class 035 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
Deleted Filing Basis: 1(a)
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 has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant requets that the amendment to allege use be withdrawn, and the application be amended from Section 1(a) to Section 1(b). Applicant further requests that the application be amended to delete
reliance on the home registration as a basis for obtaining registration in the U.S. Applicant elects to retain the priority filing date under 37 C.F.R. §§2.35(b)(3) and (4). Applicant originally
claimed dual bases for this application, under Section 44 and Section 1. Applicant requests that the application proceed to publication based solely on Intent to Use the mark.
Correspondence Information (current):
Jess M. Collen
PRIMARY EMAIL FOR CORRESPONDENCE: trademark@collenip.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tmcollen@collenip.com
The docket/reference number is X985.
Correspondence Information (proposed):
Jess M. Collen
PRIMARY EMAIL FOR CORRESPONDENCE: trademark@collenip.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tmcollen@collenip.com
The docket/reference number is X985.
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
Original PDF file:
HS_711254634-104624355_._
X985_executed_Declaration _in_Support_of_Applicatio n_181204.PDF
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Gabriel Tupula
Signatory's Position: President
Response Signature
Signature: /audra kemp/ Date: 10/20/2020
Signatory's Name: Audra Kemp
Signatory's Position: Senior Associate Attorney, Collen IP, NY State Bar member
Signatory's Phone Number: 9149415668
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: Tue Oct 20 11:07:42 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20201020110742640
404-88206124-7503c15df4834c3e113b25d467c
fe4e9a95e3be2e6ecb0759a3c1f56f86d5718-N/
A-N/A-20201020104624355928