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. 88396266 VIBE(Standard Characters, see http://uspto.report/TM/88396266/mark.png) has been amended as follows:

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

In the Office Action, registration has been refused under Section 2(d) in view of US Registration No. 4,070,825 for the mark VIBE. The registration is directed to a number of services including business management; consultancy, advisory and information services to the aforementioned services.

In order to more particularly define the Applicant’s services and address an objection to the identification of services, Applicant has amended the listing of services to read as follows:

Class 36:

Financial consulting services in the field of corporate share repurchases; providing financial counseling to businesses regarding the financial impacts associated with share repurchases; providing financial advising to companies as to timing share repurchases to enhance profitability

Applicant respectfully submits that the distinction between the amended listing of services as well as the nature of the services would prevent a finding of likelihood of confusion.

The cited registration is directed to business management and related advisory and consultancy. Such services relate to overseeing and supervising business operations including the day-to-day operations of a business. These services are not so broad as to cover financial consulting.

In contrast, the services of the present application are directed to financial consulting services in the field of corporate share repurchases and providing financial consulting to businesses regarding the impact associated with share repurchases. The services also include providing financial advising to companies as to timing share repurchases to enhance profitability. Financial consulting relating to corporate share buybacks is not related to business management services which are directed to the day-to-day operations of a business or supervising such operations. Such financial consulting as to stock repurchasing is not directed to managing the business operation of the company.

In addition, the services of financial consulting as to stock repurchases would typically be offered by different sources through different channels of trade than business management services. A financial consultant for stock buybacks would typically have different training and focus than one who is advising a company as to the operations of the business.

Applicant respectfully submits that the significant difference between the services weighs heavily against a finding of a likelihood of confusion between Applicant’s mark and that of the cited registration.

Moreover, the nature of the services also weigh against a finding of a likelihood of confusion. Business management services and financial consulting services related to stock repurchases would be directed to sophisticated clients who would be well aware of the source of those services. A company looking for business management services would not look to a financial share repurchase consultant and vice versa. Determining which business management consultant or which financial share repurchase consultant to retain is not a decision that would be made lightly or impulsively. These services offered are complex, and the prospective purchaser of the services would carefully review the qualifications of the service provider and the information provided by them. This would offer a significant opportunity for the purchaser to investigate and understand the source of the services. The decision to engage the services would also be made by a sophisticated purchaser since one would need the proper training and experience to discern if the services offered would meet the needs. Thus, the nature of the services further support a finding that there would be no likelihood of confusion.

In view of the amendment to the listing of services and remarks set forth above, Applicant respectfully requests that the refusal of registration be withdrawn, and the Application be moved toward publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Business consultation services and providing business information in the field of share repurchases; business investigations, evaluations, expert appraisals, information and research; Expert evaluations and reports relating to corporate share repurchases; Consultancy services regarding business strategies with regard to corporate stock repurchases; consulting services in the field of corporate share repurchases; providing counseling to businesses regarding the financial impacts associated with share repurchases; advising companies as to timing share repurchases to enhance profitability; providing analytical services to businesses as to the desirability of stock repurchases at a given point in time

Applicant hereby adds the following class of goods/services to the application:
New: Class 036 for Financial consulting services in the field of corporate share repurchases; providing financial counseling to businesses regarding the financial impacts associated with share repurchases; providing financial advising to companies as to timing share repurchases to enhance profitability
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Fortuna Advisors LLC, a limited liability company legally organized under the laws of New York, having an address of

            36th Floor      One Penn Plaza
      New York, New York 10119
      United States

Proposed: Fortuna Advisors LLC, a limited liability company legally organized under the laws of New York, having an address of
      36th Floor
      One Penn Plaza
      New York, New York 10119
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Anthony E. Bennett. Anthony E. Bennett of HOFFMANN & BARON, LLP, is located at

      6900 JERICHO TURNPIKE
      SYOSSET, New York 11791
      United States
The docket/reference number is 2777-4.
      The phone number is 516-822-3550.
      The fax number is 516-822-3582.
      The email address is aebdocket@hbiplaw.com

The owner's/holder's proposed attorney information: Anthony E. Bennett. Other appointed attorneys are James F. Harrington, Glenn T. Henneberger, Steven T. Zuschlag, John T. Gallagher, Celeste M. Butera, Wayne L. Ellenbogen, Susan A. Sipos, Alexander G. Vodovozov, Mark E. Baron, Kevin E. McDermott, Lauren T. Emr, Linda D. Chin, Ronald J. Baron, and Silvana M. Merlino, each of them of HOFFMANN & BARON, LLP, 6900 Jericho Turnpike, Syosset, NY 11791; and Daniel A. Scola, Jr., Salvatore J. Abbruzzese, Michael I. Chakansky, John S. Sopko, Andrea M. Wilkovich, Stephen J. Brown, Matthew J. Solow, Gie Yoon, and Leila K. Marcovici each of them of HOFFMANN & BARON, LLP, 4 Century Drive, Parsippany, NJ 07054-4406.. Anthony E. Bennett of HOFFMANN & BARON, 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

      6900 JERICHO TURNPIKE
      SYOSSET, New York 11791
      United States
The docket/reference number is 2777-4.
      The phone number is 516-822-3550.
      The fax number is 516-822-3582.
      The email address is aebdocket@hbiplaw.com

Anthony E. Bennett 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.Correspondence Information (current):
      ANTHONY E. BENNETT
      PRIMARY EMAIL FOR CORRESPONDENCE: aebdocket@hbiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 2777-4.
Correspondence Information (proposed):
      Anthony E. Bennett
      PRIMARY EMAIL FOR CORRESPONDENCE: aebdocket@hbiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): hbmail@hbiplaw.com

The docket/reference number is 2777-4.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).


I hereby elect to by-pass any fee edit for an added class(es), because I believe the original fee payment was sufficient. I understand that the examining attorney could still, upon later review, require a fee payment.
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: /anthony e. bennett/      Date: 03/27/2020
Signatory's Name: Anthony E. Bennett
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 516-822-3550


Response Signature
Signature: /anthony e. bennett/     Date: 03/27/2020
Signatory's Name: Anthony E. Bennett
Signatory's Position: Attorney of record, New York bar memeber

Signatory's Phone Number: 516-822-3550

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:    ANTHONY E. BENNETT
   HOFFMANN & BARON, LLP
   
   6900 JERICHO TURNPIKE
   SYOSSET, New York 11791
Mailing Address:    Anthony E. Bennett
   HOFFMANN & BARON, LLP
   6900 JERICHO TURNPIKE
   SYOSSET, New York 11791
        
Serial Number: 88396266
Internet Transmission Date: Fri Mar 27 16:01:58 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202003271601587
67187-88396266-7107eae51d012738d4222d149
464d3f1313f4edf26fc098d351c62527139ffb92
b-N/A-N/A-20200327155625379032