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. 88334161 HQ (Stylized and/or with Design, see http://uspto.report/TM/88334161/mark.png) has been amended as follows:

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

The above-identified application has been carefully reviewed in light of the Official Action issued on May 23, 2019. In said Official Action, the Examining Attorney cited prior pending U.S. Application Serial Nos. 88206838 and 88312787 as possible bars to registration of Applicant's mark, should either or both of the third party applications mature to registration. Applicant notes since the Examiner's citation of U.S. Application Serial No. 88312787, the application has been expressly abandoned. Applicant trusts this removes the application as a potential bar to registration of Applicant's mark. On the other hand, the final disposition of Application Serial No. 88206838 is still pending. As such, Applicant reserves its rights to present arguments at a later date against potential conflict between Applicant's mark and the mark in the third party application should the prior application mature to registration. In addition, Applicant notes the Examiner's requirement that some of the wording in its identification of services be clarified to identify the particular types of services associated with Applicant's mark. Accordingly, Applicant submits amendments to its identification of services below.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Rental of office machines and equipment; office management services; management of serviced and managed offices; business office support services; business administration for managed offices; secretarial services; photocopying, telephone answering, typing, word processing and shorthand secretarial services; clerical services; document reproduction services; personnel recruitment and placing services; advice, information and consultancy relating to these services
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 09/17/2018 and first used in commerce at least as early as 09/17/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Rental of office machines and equipment; office management services; office management services, namely, managing office functions in the nature of copying, printing, faxing, document reproduction, word processing and supplying office requisites for others; management of serviced and managed offices; business management consultation in the field of providing serviced and managed offices; business office support services; business office support services, namely, providing office support staff services; business administration for managed offices; secretarial services; photocopying, telephone answering, typing, word processing and shorthand secretarial services; clerical services; document reproduction services; personnel recruitment and placing services; personnel recruitment and placement services; advice, information and consultancy relating to these servicesClass 035 for Rental of office machines and equipment; office management services, namely, managing office functions in the nature of copying, printing, faxing, document reproduction, word processing and supplying office requisites for others; business management consultation in the field of providing serviced and managed offices; business office support services, namely, providing office support staff services; business administration for managed offices; secretarial services; photocopying, telephone answering, typing, word processing and shorthand secretarial services; clerical services; document reproduction services; personnel recruitment and placement services; advice, information and consultancy relating to these services
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 09/17/2018 and first used in commerce at least as early as 09/17/2018 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Management, brokerage, leasing and appraisal of real estate; real estate affairs; rental, brokerage, leasing and management of commercial property, offices and office space; rental of property; arranging leases for the rental of property; provision of serviced and managed offices; financing of property development; advice, information and consultancy relating to these services
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 09/17/2018 and first used in commerce at least as early as 09/17/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Management, brokerage, leasing and appraisal of real estate; Management, brokerage, leasing and appraisal of real estate of commercial properties; real estate affairs; real estate management; rental, brokerage, leasing and management of commercial property, offices and office space; rental of property; rental of commercial properties, offices and office space; arranging leases for the rental of property; arranging leases for the rental of real estate; provision of serviced and managed offices; financing of real estate development; financing of property development; advice, information and consultancy relating to these servicesClass 036 for Management, brokerage, leasing and appraisal of real estate of commercial properties; real estate management; rental, brokerage, leasing and management of commercial property, offices and office space; rental of commercial properties, offices and office space; arranging leases for the rental of real estate; financing of real estate development; advice, information and consultancy relating to these services
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 09/17/2018 and first used in commerce at least as early as 09/17/2018 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Provision of facilities for meetings, conferences, seminars and exhibitions; rental of temporary accommodation; provision of serviced and managed offices (temporary accommodation); rental of office furniture; advice, information and consultancy relating to these services
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 09/17/2018 and first used in commerce at least as early as 09/17/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Provision of facilities for meetings, conferences, seminars and exhibitions; rental of temporary accommodation; provision of serviced and managed offices (temporary accommodation); provision of serviced and managed offices, namely, providing temporary work space accommodations; rental of office furniture; advice, information and consultancy relating to these servicesClass 043 for Provision of facilities for meetings, conferences, seminars and exhibitions; rental of temporary accommodation; provision of serviced and managed offices, namely, providing temporary work space accommodations; rental of office furniture; advice, information and consultancy relating to these services
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 09/17/2018 and first used in commerce at least as early as 09/17/2018 , and is now in use in such commerce.
The applicant's current attorney information: Dusan Clark. Dusan Clark of SIDLEY AUSTIN LLP, is located at

      2021 MCKINNEY AVENUE, SUITE 2000
      DALLAS, Texas 75201
      US

The phone number is 214-981-3483.

The fax number is 214-981-3400.

The email address is ipdocketing@sidley.com

The applicants proposed attorney information: Dusan Clark. Other appointed attorneys are Julia M. Chester and Lauren G. Grau. Dusan Clark of SIDLEY AUSTIN 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

      2021 MCKINNEY AVENUE, SUITE 2000
      DALLAS, Texas 75201
      United States

The phone number is 214-981-3483.

The fax number is 214-981-3400.

The email address is ipdocketing@sidley.com

Dusan Clark 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: DUSAN CLARK. DUSAN CLARK of SIDLEY AUSTIN LLP, is located at

      2021 MCKINNEY AVENUE, SUITE 2000
      DALLAS, Texas 75201
      US

The phone number is 214-981-3483.

The fax number is 214-981-3400.

The email address is ipdocketing@sidley.com; dclark@sidley.com; sboughnou@sidley.com

The applicants proposed correspondence information: Dusan Clark. Dusan Clark of SIDLEY AUSTIN LLP, is located at

      2021 MCKINNEY AVENUE, SUITE 2000
      DALLAS, Texas 75201
      United States

The phone number is 214-981-3483.

The fax number is 214-981-3400.

The email address is ipdocketing@sidley.com; dclark@sidley.com; sboughnou@sidley.com

SIGNATURE(S)
Response Signature
Signature: /Dusan Clark/     Date: 11/06/2019
Signatory's Name: Dusan Clark
Signatory's Position: Attorney of record

Signatory's Phone Number: 214 981 3483

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:    DUSAN CLARK
   SIDLEY AUSTIN LLP
   
   2021 MCKINNEY AVENUE, SUITE 2000
   DALLAS, Texas 75201
Mailing Address:    Dusan Clark
   SIDLEY AUSTIN LLP
   2021 MCKINNEY AVENUE, SUITE 2000
   DALLAS, Texas 75201
        
Serial Number: 88334161
Internet Transmission Date: Thu Nov 07 10:56:47 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019110710564750
1789-88334161-70029235e4cd81ee2e7cba2576
83e87df5d6c9df0f8e361eaf2692f5a8c88f6d-N
/A-N/A-20191106173432665036