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. 88303708 THE MDRT ACADEMY(Standard Characters, see http://uspto.report/TM/88303708/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Providing a mobile phone application and website for the professional and personal development of insurance and financial services professional and advisors

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 042 ) for Recorded computer application software for mobile phones, namely, software for facilitating the professional and personal development of insurance and financial services professionals and advisors; Downloadable computer application software for mobile phones, namely, software for facilitating the professional and personal development of insurance and financial services professionals and advisors
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 09/11/2017 and first used in commerce at least as early as 09/11/2017 , and is now in use in such commerce.

Applicant hereby adds the following class of goods/services to the application:
New: Class 036 for Providing a website featuring information in the field of insurance and financial services, for the professional and personal development of insurance and financial services professionals and advisors
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 09/11/2017 and first used in commerce at least as early as 09/11/2017 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 036 . The specimen(s) submitted consists of Copy of page from applicant's website on which the subject mark is displayed .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-2081841093-20190925220605744485_._mdrtacademy_web.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: D. Matthew Feldhaus. D. Matthew Feldhaus of JENNER & BLOCK LLP, is located at

      325 WEST TOUHY AVENUE
      PARK RIDGE, Illinois 60068
      US
The docket/reference number is 3205-10042.

The phone number is 312-840-7657.

The email address is chgoip@jenner.com

The applicants proposed attorney information: D. Matthew Feldhaus. Other appointed attorneys are Harry J. Roper, Aaron A. Barlow, Timothy J. Barron, Reginald H. Hill, Sara Tonnies Horton, Bradford P. Lyerla, Michael Babbitt, Benjamin J. Bradford, and all the attorneys of the firm. D. Matthew Feldhaus of JENNER & BLOCK 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

      353 North Clark Street
      CHICAGO, Illinois 60654-3456
      United States
The docket/reference number is 3205-10042.

The phone number is 312-840-7657.

The email address is chgoip@jenner.com

D. Matthew Feldhaus 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: D. MATTHEW FELDHAUS. D. MATTHEW FELDHAUS of JENNER & BLOCK LLP, is located at

      325 WEST TOUHY AVENUE
      PARK RIDGE, Illinois 60068
      US
The docket/reference number is 3205-10042.

The phone number is 312-840-7657.

The email address is chgoip@jenner.com; cduran@jenner.com

The applicants proposed correspondence information: D. Matthew Feldhaus. D. Matthew Feldhaus of JENNER & BLOCK LLP, is located at

      353 North Clark Street
      CHICAGO, Illinois 60654-3456
      United States
The docket/reference number is 3205-10042.

The phone number is 312-840-7657.

The email address is chgoip@jenner.com; cduran@jenner.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use Academy apart from the mark as shown.


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: /d. matthew feldhaus/      Date: 09/30/2019
Signatory's Name: D. Matthew Feldhaus
Signatory's Position: Attorney of Record, Illinois Bar Member
Signatory's Phone Number: 312-840-7657


Response Signature
Signature: /d. matthew feldhaus/     Date: 09/30/2019
Signatory's Name: D. Matthew Feldhaus
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312-840-7657

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:    D. MATTHEW FELDHAUS
   JENNER & BLOCK LLP
   
   325 WEST TOUHY AVENUE
   PARK RIDGE, Illinois 60068
Mailing Address:    D. Matthew Feldhaus
   JENNER & BLOCK LLP
   353 North Clark Street
   CHICAGO, Illinois 60654-3456
        
RAM Sale Number: 88303708
RAM Accounting Date: 09/30/2019
        
Serial Number: 88303708
Internet Transmission Date: Mon Sep 30 21:02:24 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019093021022427
7264-88303708-610567d922ae6b614a9e4a9843
7aa4c6e08385e899a4e3c46e39db9c94bc4590af
-DA-02237963-20190930205816022263