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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88334176 |
LAW OFFICE ASSIGNED |
LAW OFFICE 105 |
MARK SECTION |
MARK |
http://uspto.report/TM/88334176/mark.png |
LITERAL ELEMENT |
HQ |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
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. |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/01/1977 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/01/1977 |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
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 services |
FINAL DESCRIPTION |
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) |
FIRST USE ANYWHERE DATE |
At least as early as 02/01/1977 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/01/1977 |
GOODS AND/OR SERVICES SECTION (036)(current) |
INTERNATIONAL CLASS |
036 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/01/1977 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/01/1977 |
GOODS AND/OR SERVICES SECTION (036)(proposed) |
INTERNATIONAL CLASS |
036 |
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
services |
FINAL DESCRIPTION |
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) |
FIRST USE ANYWHERE DATE |
At least as early as 02/01/1977 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/01/1977 |
GOODS AND/OR SERVICES SECTION (043)(current) |
INTERNATIONAL CLASS |
043 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 02/01/1977 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/01/1977 |
GOODS AND/OR SERVICES SECTION (043)(proposed) |
INTERNATIONAL CLASS |
043 |
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 services |
FINAL DESCRIPTION |
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) |
FIRST USE ANYWHERE DATE |
At least as early as 02/01/1977 |
FIRST USE IN COMMERCE DATE |
At least as early as 02/01/1977 |
ATTORNEY SECTION (current) |
NAME |
Dusan Clark |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
SIDLEY AUSTIN LLP |
STREET |
2021 MCKINNEY AVENUE, SUITE 2000 |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
US |
PHONE |
214-981-3483 |
FAX |
214-981-3400 |
EMAIL |
ipdocketing@sidley.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
ATTORNEY SECTION (proposed) |
NAME |
Dusan Clark |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
SIDLEY AUSTIN LLP |
STREET |
2021 MCKINNEY AVENUE, SUITE 2000 |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
United States |
PHONE |
214-981-3483 |
FAX |
214-981-3400 |
EMAIL |
ipdocketing@sidley.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
OTHER APPOINTED ATTORNEY |
Julia M. Chester and Lauren G. Grau |
CORRESPONDENCE SECTION (current) |
NAME |
DUSAN CLARK |
FIRM NAME |
SIDLEY AUSTIN LLP |
STREET |
2021 MCKINNEY AVENUE, SUITE 2000 |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
US |
PHONE |
214-981-3483 |
FAX |
214-981-3400 |
EMAIL |
ipdocketing@sidley.com; dclark@sidley.com; sboughnou@sidley.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
CORRESPONDENCE SECTION (proposed) |
NAME |
Dusan Clark |
FIRM NAME |
SIDLEY AUSTIN LLP |
STREET |
2021 MCKINNEY AVENUE, SUITE 2000 |
CITY |
DALLAS |
STATE |
Texas |
POSTAL CODE |
75201 |
COUNTRY |
United States |
PHONE |
214-981-3483 |
FAX |
214-981-3400 |
EMAIL |
ipdocketing@sidley.com; dclark@sidley.com; sboughnou@sidley.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Dusan Clark/ |
SIGNATORY'S NAME |
Dusan Clark |
SIGNATORY'S POSITION |
Attorney of record |
SIGNATORY'S PHONE NUMBER |
214 981 3483 |
DATE SIGNED |
11/06/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Nov 07 10:57:40 EST 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XX.XX-2
0191107105740256207-88334
176-7007c2a461ce5d3152ea0
4268ad768e4666da1c2bb3644
538afa17f93bf296677-N/A-N
/A-20191106165535058887 |
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.
88334176 HQ(Standard Characters, see http://uspto.report/TM/88334176/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 02/01/1977 and first used in commerce at least as early as 02/01/1977 , 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 02/01/1977 and first used in commerce at least as early as 02/01/1977 , 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 02/01/1977 and first used in commerce at least as early as 02/01/1977 , 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 02/01/1977 and first used in commerce at least as early as 02/01/1977 , 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 02/01/1977 and first used in commerce at least as early as 02/01/1977 , 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 02/01/1977 and first used in commerce at least as early as 02/01/1977 , 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: 88334176
Internet Transmission Date: Thu Nov 07 10:57:40 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019110710574025
6207-88334176-7007c2a461ce5d3152ea04268a
d768e4666da1c2bb3644538afa17f93bf296677-
N/A-N/A-20191106165535058887