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. 88266015 EMYTH (Stylized and/or with Design, see http://uspto.report/TM/88266015/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 041 for providing one-on-one telephonic and video conference instruction in the fields of business, business management, entrepreneurship, leadership, business systems, processes, and the implementation of these; training services in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; computer-based and online courses in the fields of business, business management, entrepreneurship, and leadership; educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership; business systems and processes; educational services, namely, conducting classes, seminars, conferences, workshops and individual training sessions in the fields of business, business management, entrepreneurship, and leadership in person, by telephone, and via computer and communication networks; providing websites featuring information in the fields of professional coaching in the field of business, business management, entrepreneurship, leadership, business systems, and processes; on-line journals, namely, blogs, podcasts and videos in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; professional coaching of business owners in the field of business, business management, entrepreneurship, leadership, business systems and processes; professional coaching of business owners in the fields of business expansion, selling a business, starting a business, improving a business, leadership, business management, marketing, finances, client fulfillment, new client generation, and converting new clients into long-standing client relationships; professional coaching of business owners in the field of business via electronic networks; education and training services for business coaches; providing online, non-downloadable videos in the fields of business, business education, business coaching, entrepreneurship, leadership, business systems, and processes
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: providing one-on-one telephonic and video conference instruction in the fields of business, business management, entrepreneurship, leadership, business systems, processes, and the implementation of these; training services in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; computer-based and online courses in the fields of business, business management, entrepreneurship, and leadership; educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership; educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership, business systems and processes; business systems and processes; educational services, namely, conducting classes, seminars, conferences, workshops and individual training sessions in the fields of business, business management, entrepreneurship, and leadership in person, by telephone, and via computer and communication networks; providing websites featuring information in the fields of professional coaching in the field of business, business management, entrepreneurship, leadership, business systems, and processes; on-line journals, namely, blogs, podcasts and videos in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; professional coaching of business owners in the field of business, business management, entrepreneurship, leadership, business systems and processes; professional coaching of business owners in the fields of business expansion, selling a business, starting a business, improving a business, leadership, business management, marketing, finances, client fulfillment, new client generation, and converting new clients into long-standing client relationships; professional coaching of business owners in the field of business via electronic networks; education and training services covering skills and methodologies needed by business coaches; education and training services for business coaches; providing online, non-downloadable videos in the fields of business, business education, business coaching, entrepreneurship, leadership, business systems, and processesClass 041 for providing one-on-one telephonic and video conference instruction in the fields of business, business management, entrepreneurship, leadership, business systems, processes, and the implementation of these; training services in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; computer-based and online courses in the fields of business, business management, entrepreneurship, and leadership; educational services, namely, conducting distance learning instruction in the fields of business, business management, entrepreneurship, leadership, business systems and processes; educational services, namely, conducting classes, seminars, conferences, workshops and individual training sessions in the fields of business, business management, entrepreneurship, and leadership in person, by telephone, and via computer and communication networks; providing websites featuring information in the fields of professional coaching in the field of business, business management, entrepreneurship, leadership, business systems, and processes; on-line journals, namely, blogs, podcasts and videos in the fields of business, business management, entrepreneurship, leadership, business systems, and processes; professional coaching of business owners in the field of business, business management, entrepreneurship, leadership, business systems and processes; professional coaching of business owners in the fields of business expansion, selling a business, starting a business, improving a business, leadership, business management, marketing, finances, client fulfillment, new client generation, and converting new clients into long-standing client relationships; professional coaching of business owners in the field of business via electronic networks; education and training services covering skills and methodologies needed by business coaches; providing online, non-downloadable videos in the fields of business, business education, business coaching, entrepreneurship, leadership, business systems, and processes
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 class of goods/services in the application:
Current: Class 042 for providing temporary use of non-downloadable software; providing use of non-downloadable and downloadable documents for business owners and entrepreneurs for use in business planning and analysis, and growing their businesses as part of a business coaching program; providing use of non-downloadable and downloadable documents for business owners and entrepreneurs relating to work in their business, business management, entrepreneurship, leadership, business systems, and processes; technical support for online computer software and websites, namely, troubleshooting of computer software problems; providing online platforms and virtual workspaces for collaboration, communication, document exchange, completion of assignments, sharing of work product, and planning and execution of coaching and educational plans; creating and hosting websites and microsites for business coaches; providing online community websites for business coaches, entrepreneurs, and small business owners; downloadable audio recordings in the nature of podcasts and educational programs
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: providing temporary use of non-downloadable software; providing a website that includes an online library of non-downloadable and downloadable documents for business owners and entrepreneurs for use in business planning and analysis, and growing their businesses as part of a business coaching program; providing use of non-downloadable and downloadable documents for business owners and entrepreneurs for use in business planning and analysis, and growing their businesses as part of a business coaching program; providing an online library of non-downloadable and downloadable documents for business owners and entrepreneurs relating to work in developing their business, business management, entrepreneurship, leadership, business systems, and processes; providing use of non-downloadable and downloadable documents for business owners and entrepreneurs relating to work in their business, business management, entrepreneurship, leadership, business systems, and processes; technical support for online computer software and websites, namely, troubleshooting of computer software problems; providing a web hosting platform for virtual workspaces for collaboration, communication, document exchange, completion of assignments, sharing of work product, and planning and execution of coaching and educational plans; providing online platforms and virtual workspaces for collaboration, communication, document exchange, completion of assignments, sharing of work product, and planning and execution of coaching and educational plans; creating and hosting websites and microsites for business coaches; providing websites with online community features for business coaches, entrepreneurs, and small business owners; providing online community websites for business coaches, entrepreneurs, and small business owners; downloadable audio recordings in the nature of podcasts and educational programsClass 042 for providing a website that includes an online library of non-downloadable and downloadable documents for business owners and entrepreneurs for use in business planning and analysis, and growing their businesses as part of a business coaching program; providing an online library of non-downloadable and downloadable documents for business owners and entrepreneurs relating to work in developing their business, business management, entrepreneurship, leadership, business systems, and processes; technical support for online computer software and websites, namely, troubleshooting of computer software problems; providing a web hosting platform for virtual workspaces for collaboration, communication, document exchange, completion of assignments, sharing of work product, and planning and execution of coaching and educational plans; creating and hosting websites and microsites for business coaches; providing websites with online community features for business coaches, entrepreneurs, and small business owners
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 downloadable audio recordings in the nature of podcasts and educational programs
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.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4653304.


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

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /JeffersonScher/     Date: 07/11/2019
Signatory's Name: Jefferson F. Scher
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 650-812-3400

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.

        
RAM Sale Number: 88266015
RAM Accounting Date: 07/12/2019
        
Serial Number: 88266015
Internet Transmission Date: Thu Jul 11 21:43:14 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019071121431416
3563-88266015-6205ddb2af5919bb487779218e
79ab5369f7f7171d85fe72a9ef11ce40ba6f8e-C
C-6241-20190711212444158523