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. 88268864 SMILE DIRECT CLUB(Standard Characters, see http://uspto.report/TM/88268864/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of The Examining Attorney initially refused the application based on an alleged likelihood of confusion with US Reg. No. 5,324,184. Applicant now owns US Reg. No. 5,324,184 and is claiming ownership of the same on this electronic response form. On this basis, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal. has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing a website featuring blogs, videos and non-downloadable publications in the nature of articles and posts in the field(s) of lifestyle, beauty, health, diet, wellness, orthodontia and oral health; training and educational services in the fields of dentistry and orthodontia
Original Filing Basis:
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 03/29/2016 and first used in commerce at least as early as 03/29/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing a website featuring blogs, videos and non-downloadable publications in the nature of articles and posts in the field(s) of lifestyle, beauty, health, diet, wellness, orthodontia and oral health; Providing a website featuring blogs, non-downloadable videos and non-downloadable publications in the nature of articles and posts in the fields of lifestyle, beauty, health, diet, wellness, orthodontia and oral health; training and educational services in the fields of dentistry and orthodontia; training and educational services, namely, providing classes, online non-downloadable educational videos, and in-person training programs in the fields of dentistry and orthodontia and distributing educational materials in connection therewithClass 041 for Providing a website featuring blogs, non-downloadable videos and non-downloadable publications in the nature of articles and posts in the fields of lifestyle, beauty, health, diet, wellness, orthodontia and oral health; training and educational services, namely, providing classes, online non-downloadable educational videos, and in-person training programs in the fields of dentistry and orthodontia and distributing educational materials in connection therewith
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 03/29/2016 and first used in commerce at least as early as 03/29/2016 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5324184.


SIGNATURE(S)
Response Signature
Signature: /AJ Schumacher/     Date: 10/02/2019
Signatory's Name: AJ Schumacher
Signatory's Position: Associate Attorney, Foley & Lardner LLP, WI and IL bar member

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.

        
Serial Number: 88268864
Internet Transmission Date: Wed Oct 02 20:30:30 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.X-201910022030307462
56-88268864-6103ab36b7946f5bca0e96749c9a
44ba6732f731f65733fcdc88bb2833517e580d3-
N/A-N/A-20191002201841247817