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. 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 in the nature of Applicant's Response has been attached.
Original PDF file:
evi_19822100222-20190930182844510045_._Response_to_Office_Action_EDISON.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
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 incubator services, namely, 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
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.

Proposed:
Tracked Text Description: Mutual fund investment fund investment consultation; Mutual fund investment; Fund investment consultation; Management of a capital investment fund; Private equity fund investment services; Hedge fund investment services; incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits incubator services, namely, 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; 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; business accelerator services; 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; 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.

The applicant's current attorney information: James L. Vana. James L. Vana of PERKINS COIE LLP, is located at

      1201 THIRD AVENUE, SUITE 4900
      SEATTLE, Washington 98101
      US
The docket/reference number is 121132-4000.

The phone number is 206-359-8000.

The fax number is 206-359-9000.

The email address is pctrademarks@perkinscoie.com

The applicants proposed attorney information: James L. Vana. Other appointed attorneys are Lindsay B. Allen, Britt L. Anderson, Craig A. Beaker, Stefan B. Blum, Craig C. Bradley, Jared H. Bryant, Jeremy L. Buxbaum, L. Omar Cojulun, Sabrina J. Danielson, Colleen M. Ganin, Alexander J.A. Garcia, Daniel J. Glenn, Mark S. Goodrich, Lynne E. Graybeal, Patchen M. Haggerty, John P. Halski, Thomas L. Holt, Jason S. Howell, Lisa K. Koenig, Elizabeth A. Kristoferson, Kirstin E. Larson, Winfield B. Martin, Alicia A. Matusheski, Vicki Y. Nee, Lisa T. Oratz, Scott J. Palmer, Seth H. Reagan, Heidi L. Sachs, Grace Han Stanton, Danielle Suh, Fabricio Vayra and Robert G. Woolston. James L. Vana of PERKINS COIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1201 THIRD AVENUE, SUITE 4900
      SEATTLE, Washington 98101
      United States
The docket/reference number is 121132-4000.

The phone number is 206-359-8000.

The fax number is 206-359-9000.

The email address is pctrademarks@perkinscoie.com

James L. Vana 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: JAMES L. VANA. JAMES L. VANA of PERKINS COIE LLP, is located at

      1201 THIRD AVENUE, SUITE 4900
      SEATTLE, Washington 98101
      US
The docket/reference number is 121132-4000.

The phone number is 206-359-8000.

The fax number is 206-359-9000.

The email address is pctrademarks@perkinscoie.com

The applicants proposed correspondence information: James L. Vana. James L. Vana of PERKINS COIE LLP, is located at

      1201 THIRD AVENUE, SUITE 4900
      SEATTLE, Washington 98101
      United States
The docket/reference number is 121132-4000.

The phone number is 206-359-8000.

The fax number is 206-359-9000.

The email address is pctrademarks@perkinscoie.com

SIGNATURE(S)
Response Signature
Signature: /James L. Vana/     Date: 09/30/2019
Signatory's Name: James L. Vana
Signatory's Position: Attorney of Record, 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.

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
        
Serial Number: 88255927
Internet Transmission Date: Mon Sep 30 19:02:22 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909301902229
99238-88255927-6101c878cdc25b90bd862c64c
338d5e4f8575e4610f9e24652d1c93ed15e371-N
/A-N/A-20190930182844510045