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. 88249572 KAKUSHIN(Standard Characters, see http://uspto.report/TM/88249572/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 009 for (Based on Use in Commerce) Audio and video recordings featuring business, leadership, strategy, development, and training; Audio recordings featuring business, leadership, strategy, development, and training; Digital materials, namely, videos and e-learning modules featuring business, leadership, strategy, development, training, and proprietary methodologies; Digital media, namely, downloadable audio, video, and print files featuring business, leadership, strategy, development, training, and proprietary methodologies; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational/training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable business, leadership, strategy, development, and training content via the internet and wireless devices; Downloadable documents in the field of business, leadership, strategy, development, and training provided via a website; Downloadable educational course materials in the field of business, leadership, strategy, development, and training; Downloadable electronic publications in the nature of posts in the field of business, leadership, strategy, development, and training; Downloadable image files containing charts and graphs related to business, leadership, strategy, development, and training; Downloadable MP3 files and MP3 recordings featuring learning modules; Downloadable multimedia files containing audio relating to business, leadership, strategy, development, and training; Downloadable multimedia files containing text relating to business, leadership, strategy, development, and training; Downloadable multimedia files containing video relating to business, leadership, strategy, development, and training; Downloadable written articles in the field of business, leadership, strategy, development, and training; Educational software featuring instruction in business, leadership, strategy, development, training, and proprietary methodologies; Video recordings featuring instruction in business, leadership, strategy, development, training, and proprietary methodologies; (Based on Intent to Use) Audio books in the field of business, leadership, strategy, development, and training; Downloadable podcasts in the fields of business, leadership, strategy, development, and training; Downloadable webcasts in the field of business, leadership, strategy, development, and training; Downloadable webinars in the field of business, leadership, strategy, development, and training; E-books featuring business, leadership, strategy, development, training, and proprietary methodologies recorded on computer media
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 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 12/07/2018 and first used in commerce at least as early as 12/07/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: (Based on Use in Commerce) Audio and video recordings featuring business, leadership, strategy, development, and training; (Based on Use in Commerce) Audio and video recordings about business, leadership, business strategy, career development, and career training; Audio recordings featuring business, leadership, strategy, development, and training; Audio recordings about business, leadership, business strategy, career development, and career training; Digital materials, namely, videos and e-learning modules featuring business, leadership, strategy, development, training, and proprietary methodologies; Digital materials, namely, CDs, MP3 files, MP3 recordings, memory cards, computer memory devices, external hard drives, downloadable files, and downloadable multimedia files containing videos and e-learning modules featuring business, leadership, business strategy, career development, career training, and proprietary business methodologies; Digital media, namely, downloadable audio, video, and print files featuring business, leadership, strategy, development, training, and proprietary methodologies; Digital media, namely, downloadable audio, video, and print files featuring business, leadership, business strategy, career development, career training, and proprietary business methodologies; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational/training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable business, leadership, strategy, development, and training content via the internet and wireless devices; Downloadable videos, podcasts, and video podcasts featuring business, leadership, business strategy, career development, and career training content downloadable via the internet and wireless devices; Downloadable documents in the field of business, leadership, strategy, development, and training provided via a website; Downloadable documents in the field of business, leadership, business strategy, career development, and career training provided via a website; Downloadable educational course materials in the field of business, leadership, strategy, development, and training; Downloadable educational course materials in the field of business, leadership, business strategy, career development, and career training; Downloadable electronic publications in the nature of posts in the field of business, leadership, strategy, development, and training; Downloadable electronic publications in the nature of written articles in the field of business, leadership, business strategy, career development, and career training; Downloadable image files containing charts and graphs related to business, leadership, strategy, development, and training; Downloadable image files containing charts and graphs related to business, leadership, business strategy, career development, and career training; Downloadable MP3 files and MP3 recordings featuring learning modules; Downloadable MP3 files and MP3 recordings featuring learning modules in the field of business, leadership, leadership development, strategic planning, and project management; Downloadable multimedia files containing audio relating to business, leadership, strategy, development, and training; Downloadable multimedia files containing audio relating to business, leadership, business strategy, career development, and career training; Downloadable multimedia files containing text relating to business, leadership, strategy, development, and training; Downloadable multimedia files containing text relating to business, leadership, business strategy, career development, and career training; Downloadable multimedia files containing video relating to business, leadership, strategy, development, and training; Downloadable multimedia files containing video relating to business, leadership, business strategy, career development, and career training; Downloadable written articles in the field of business, leadership, strategy, development, and training; Downloadable written articles in the field of business, leadership, business strategy, career development, and career training; Educational software featuring instruction in business, leadership, strategy, development, training, and proprietary methodologies; Downloadable educational software featuring instruction in business, leadership, business strategy, career development, career training, and proprietary business methodologies; Video recordings featuring instruction in business, leadership, strategy, development, training, and proprietary methodologies; Video recordings featuring instruction in business, leadership, business strategy, career development, career training, and proprietary business methodologies; (Based on Intent to Use) Audio books in the field of business, leadership, strategy, development, and training; (Based on Intent to Use) Audio books in the field of business, leadership, business strategy, career development, and career training; Downloadable podcasts in the fields of business, leadership, strategy, development, and training; Downloadable podcasts in the fields of business, leadership, business strategy, career development, and career training; Downloadable webcasts in the field of business, leadership, strategy, development, and training; Downloadable webcasts in the field of business, leadership, business strategy, career development, and career training; Downloadable webinars in the field of business, leadership, strategy, development, and training; Downloadable webinars in the field of business, leadership, business strategy, career development, and career training; E-books featuring business, leadership, strategy, development, training, and proprietary methodologies recorded on computer media; E-books featuring business, leadership business strategy, career development, career training, and proprietary business methodologies, recorded on computer mediaClass 009 for (Based on Use in Commerce) Audio and video recordings about business, leadership, business strategy, career development, and career training; Audio recordings about business, leadership, business strategy, career development, and career training; Digital materials, namely, CDs, MP3 files, MP3 recordings, memory cards, computer memory devices, external hard drives, downloadable files, and downloadable multimedia files containing videos and e-learning modules featuring business, leadership, business strategy, career development, career training, and proprietary business methodologies; Digital media, namely, downloadable audio, video, and print files featuring business, leadership, business strategy, career development, career training, and proprietary business methodologies; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational/training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable videos, podcasts, and video podcasts featuring business, leadership, business strategy, career development, and career training content downloadable via the internet and wireless devices; Downloadable documents in the field of business, leadership, business strategy, career development, and career training provided via a website; Downloadable educational course materials in the field of business, leadership, business strategy, career development, and career training; Downloadable electronic publications in the nature of written articles in the field of business, leadership, business strategy, career development, and career training; Downloadable image files containing charts and graphs related to business, leadership, business strategy, career development, and career training; Downloadable MP3 files and MP3 recordings featuring learning modules in the field of business, leadership, leadership development, strategic planning, and project management; Downloadable multimedia files containing audio relating to business, leadership, business strategy, career development, and career training; Downloadable multimedia files containing text relating to business, leadership, business strategy, career development, and career training; Downloadable multimedia files containing video relating to business, leadership, business strategy, career development, and career training; Downloadable written articles in the field of business, leadership, business strategy, career development, and career training; Downloadable educational software featuring instruction in business, leadership, business strategy, career development, career training, and proprietary business methodologies; Video recordings featuring instruction in business, leadership, business strategy, career development, career training, and proprietary business methodologies; (Based on Intent to Use) Audio books in the field of business, leadership, business strategy, career development, and career training; Downloadable podcasts in the fields of business, leadership, business strategy, career development, and career training; Downloadable webcasts in the field of business, leadership, business strategy, career development, and career training; Downloadable webinars in the field of business, leadership, business strategy, career development, and career training; E-books featuring business, leadership business strategy, career development, career training, and proprietary business methodologies, recorded on computer media
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 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 12/07/2018 and first used in commerce at least as early as 12/07/2018 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Translation
The English translation of "kakushin" in the mark is "innovation".


Miscellaneous Statement


Original PDF file:
mis-98191223154-20190708114811733800_._KAKUS-T001AX_Response_to_Priority_Action_2019.07.08.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3

SIGNATURE(S)
Response Signature
Signature: /Stephen D. Wilson/     Date: 07/08/2019
Signatory's Name: Stephen D. Wilson, Esq.
Signatory's Position: Attorney of record, Florida, Maine, and Massachusetts bar member

Signatory's Phone Number: (850) 202-3342

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88249572
Internet Transmission Date: Mon Jul 08 11:59:52 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201907081159523
40439-88249572-6207f48c5c58523c326e45d25
fda71fdab6289a96fdfd79dfd6cc9a9755775516
-N/A-N/A-20190708114811733800