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. 88255927 EDISON(Standard Characters, see http://uspto.report/TM/88255927/mark.png) has been amended as follows:

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

Please see argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: Applicant's Response
Original PDF file:
evi_19822100222-202004011 40103534496_._147726669_1.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Mutual fund investment; Fund investment consultation; Management of a capital investment fund; Private equity fund investment services; Hedge fund investment services; Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits, and providing, facilitating and arranging for financing, equity capital investment and debt investment and providing strategic financial advisory services to emerging and start-up companies and entrepreneurs; Investment services, namely, venture capital funding services to emerging and start-up companies; business accelerator services, namely, business consulting in the field of emerging and startup companies, providing business development assistance services and business management support to emerging and startup companies, and providing work spaces containing business equipment to others
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: Mutual fund investment; Fund investment consultation; Management of a capital investment fund; Private equity fund investment services; Hedge fund investment services; Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits, and providing, facilitating and arranging for financing, equity capital investment and debt investment and providing strategic financial advisory services to emerging and start-up companies and entrepreneurs; Investment services, namely, venture capital funding services to emerging and start-up companies; business accelerator services, namely, business consulting in the field of emerging and startup companies, providing business development assistance services and business management support to emerging and startup companies, and providing work spaces containing business equipment to othersClass 036 for Mutual fund investment; Fund investment consultation; Management of a capital investment fund; Private equity fund investment services; Hedge fund investment services; Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits, and providing, facilitating and arranging for financing, equity capital investment and debt investment and providing strategic financial advisory services to emerging and start-up companies and entrepreneurs; Investment services, namely, venture capital funding services to emerging and start-up companies
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 035 for Business accelerator services, namely, business consulting in the field of emerging and startup companies; Providing business development assistance and business management services to emerging and startup companies; Incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits
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: The Edison Companies, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      382 NE 191st Street #24148
      Miami, Florida 33179
      United States

Proposed: The Edison Companies, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      382 NE 191st Street #24148
      Miami, Florida 33179
      United States
      Email Address: XXXX
Correspondence Information (current):
      James L. Vana
      PRIMARY EMAIL FOR CORRESPONDENCE: pctrademarks@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 121132-4000.
Correspondence Information (proposed):
      James L. Vana
      PRIMARY EMAIL FOR CORRESPONDENCE: pctrademarks@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 121132-4000.

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: /Ian D. Rogers/      Date: 04/01/2020
Signatory's Name: Rogers, Ian D.
Signatory's Position: Counsel, Perkins Coie LLP, Washington State Bar member
Signatory's Phone Number: 206-359-8000


Request for Reconsideration Signature
Signature: /Ian D. Rogers/     Date: 04/01/2020
Signatory's Name: Rogers, Ian D.
Signatory's Position: Counsel, Perkins Coie LLP, Washington State Bar member

Signatory's Phone Number: 206-359-8000

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:    James L. Vana
   PERKINS COIE LLP
   
   1201 THIRD AVENUE, SUITE 4900
   SEATTLE, Washington 98101
Mailing Address:    James L. Vana
   PERKINS COIE LLP
   1201 THIRD AVENUE, SUITE 4900
   SEATTLE, Washington 98101
        
RAM Sale Number: 88255927
RAM Accounting Date: 04/01/2020
        
Serial Number: 88255927
Internet Transmission Date: Wed Apr 01 17:04:09 ET 2020
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XXX-202004011704099
71871-88255927-7101c26fe76444ec823fc1f2e
8d41ef153f60154aecf3a8feb53deb23e8d7d61-
CC-04083477-20200401165237138863