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. 88239125 INTERVARSITY CHRISTIAN FELLOWSHIP/USA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8823912 5/large) has been amended as follows:

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

See the arguments attached in the Evidence section below

EVIDENCE
Evidence has been attached: Response to office action with Exhibits A-I attached.
Original PDF file:
evi_1992474761-2020032610 3229420723_._Response_wit h_Exhibits_A-I_attached.pdf
Converted PDF file(s) ( 76 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28Evidence-29Evidence-30Evidence-31Evidence-32Evidence-33Evidence-34Evidence-35Evidence-36Evidence-37Evidence-38Evidence-39Evidence-40Evidence-41Evidence-42Evidence-43Evidence-44Evidence-45Evidence-46Evidence-47Evidence-48Evidence-49Evidence-50Evidence-51Evidence-52Evidence-53Evidence-54Evidence-55Evidence-56Evidence-57Evidence-58Evidence-59Evidence-60Evidence-61Evidence-62Evidence-63Evidence-64Evidence-65Evidence-66Evidence-67Evidence-68Evidence-69Evidence-70Evidence-71Evidence-72Evidence-73Evidence-74Evidence-75Evidence-76

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for Print materials, namely, books, magazines, brochures, pamphlets, guides, booklets, handbooks, manuals, manuscripts, newsletters, and curriculum in the fields of religion, spiritual and cultural issues and values, personal, spiritual, character and leadership development, prayer, and building spiritual movements and ministry; stickers, name tags, proxes, notecards, folders, post cards, business cards, greeting cards, holiday cards, letterhead, promotional cards, envelopes, stationary, book marks, flash cards, portfolios, journals, pins, certificates, notepads, calendars, posters, paper banners, padfolios, pens, colored pencils, and writing instruments
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.


Proposed:

Tracked Text Description: Print materials, namely, books, magazines, brochures, pamphlets, guides, booklets, handbooks, manuals, manuscripts, newsletters, and curriculum in the fields of religion, spiritual and cultural issues and values, personal, spiritual, character and leadership development, prayer, and building spiritual movements and ministry; Print materials, namely, books, magazines, brochures, pamphlets, guides, booklets, handbooks, manuals,¶
manuscripts, newsletters, and curriculum in the fields of religion, spiritual and cultural issues and values,¶
personal, spiritual, character and leadership development, prayer, and building spiritual movements and¶
ministry; stickers, name tags, proxes, notecards, folders, post cards, business cards, greeting cards, holiday cards, letterhead, promotional cards, envelopes, stationary, book marks, flash cards, portfolios, journals, pins, certificates, notepads, calendars, posters, paper banners, padfolios, pens, colored pencils, and writing instruments; stickers, adhesive backed paper in the nature of name tags, note cards, folders, post cards, business¶
cards, greeting cards, holiday cards, letterhead paper, printed advertising material in the nature of¶
promotional cards, envelopes, stationary, book marks, flash cards, document portfolios, blank writing¶
journals, drawing pins, push pins, printed certificates, notepads, calendars, posters, paper banners, padfolios,¶
pens, colored pencils, and writing instrumentsClass 016 for Print materials, namely, books, magazines, brochures, pamphlets, guides, booklets, handbooks, manuals, manuscripts, newsletters, and curriculum in the fields of religion, spiritual and cultural issues and values, personal, spiritual, character and leadership development, prayer, and building spiritual movements and ministry; stickers, adhesive backed paper in the nature of name tags, note cards, folders, post cards, business cards, greeting cards, holiday cards, letterhead paper, printed advertising material in the nature of promotional cards, envelopes, stationary, book marks, flash cards, document portfolios, blank writing journals, drawing pins, push pins, printed certificates, notepads, calendars, posters, paper banners, padfolios, pens, colored pencils, and writing instruments
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.

Applicant proposes to amend the following:

Current:
Class 018 for Backpacks; bags, namely, table cover bags, computer bags, tablet bags, gift bags, tote bags
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.


Proposed:

Tracked Text Description: Backpacks; bags, namely, table cover bags, computer bags, tablet bags, gift bags, tote bags; bags, namely, gift bags, tote bagsClass 018 for Backpacks; bags, namely, gift bags, tote bags
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.

Applicant proposes to amend the following:

Current:
Class 020 for fitted table covers
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.


Proposed:

Tracked Text Description: fitted table covers; Fitted table covers, and bags specially adapted for holding the aforementioned goodsClass 020 for Fitted table covers, and bags specially adapted for holding the aforementioned goods
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.

Applicant proposes to amend the following:

Current:
Class 024 for Unfitted plastic and textile table covers; banners made of textile, namely, cloth and plastic
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.


Proposed:

Tracked Text Description: Unfitted plastic and textile table covers; Unfitted plastic and textile table covers, and bags specially adapted for holding the aforementioned goods; banners made of textile, namely, cloth and plasticClass 024 for Unfitted plastic and textile table covers, and bags specially adapted for holding the aforementioned goods; banners made of textile, namely, cloth and plastic
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.

Applicant proposes to amend the following:

Current:
Class 025 for Clothing, namely, shirts, hats, jackets
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.


Proposed:
Class 025 for Clothing, namely, shirts, hats, jackets
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Computer bags; computer tablet bags
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: InterVarsity Christian Fellowship/USA, a corporation of Illinois, having an address of
      635 Science Drive
      Madison, Wisconsin 53711
      United States

Proposed: InterVarsity Christian Fellowship/USA, a corporation of Illinois, having an address of
      635 Science Drive
      Madison, Wisconsin 53711
      United States
      Email Address: XXXX
Correspondence Information (current):
      Bassam Ibrahim
      PRIMARY EMAIL FOR CORRESPONDENCE: bassam.ibrahim@bipc.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 1030776-057.
Correspondence Information (proposed):
      Bassam Ibrahim
      PRIMARY EMAIL FOR CORRESPONDENCE: bassam.ibrahim@bipc.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kathy.bazil@bipc.com

The docket/reference number is 1030776-057.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /Bassam N Ibrahim/ /s/      Date: 03/26/2020
Signatory's Name: Bassam N. Ibrahim
Signatory's Position: Attorney of Record, VA Bar Member
Signatory's Phone Number: 703-836-6620


Response Signature
Signature: /Bassam N Ibrahim/ /s/     Date: 03/26/2020
Signatory's Name: Bassam N Ibrahim
Signatory's Position: Attorney

Signatory's Phone Number: 7038386584

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:    Bassam Ibrahim
   BUCHANAN INGERSOLL & ROONEY PC
   SUITE 500
   1737 KING STREET
   ALEXANDRIA, Virginia 22314
Mailing Address:    Bassam Ibrahim
   BUCHANAN INGERSOLL & ROONEY PC
   SUITE 500
   1737 KING STREET
   ALEXANDRIA, Virginia 22314
        
RAM Sale Number: 88239125
RAM Accounting Date: 03/26/2020
        
Serial Number: 88239125
Internet Transmission Date: Thu Mar 26 13:26:08 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020032613260886
0209-88239125-710f5b99e62555bfafdba99327
733ba933c59d752f5f64b2871c18522fe0de4722
-CC-26078206-20200326103229420723