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. 88404996 MACNAUGHTON(Standard Characters, see http://uspto.report/TM/88404996/mark.png) has been amended as follows:

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

Please see the actual argument text in support thereof attached within the Evidence section.

EVIDENCE
Evidence in the nature of actual argument text in support thereof has been attached.
Original PDF file:
evi_1618212129-20200103175402764775_._Office_Action_Response_for_MACNAUGHTON__SN_88404996_.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for real estate investment; real estate management and operation; real estate brokerage; real estate sales; real estate leasing
Original Filing Basis:
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.

Proposed:
Tracked Text Description: real estate investment; real estate management and operation; real estate management and operation services; real estate brokerage; real estate sales; real estate sales management; real estate leasingClass 036 for real estate investment; real estate management and operation services; real estate brokerage; real estate sales management; real estate leasing
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.

The applicant's current attorney information: Susanna P. Lichter. Susanna P. Lichter of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      US
The docket/reference number is 52301-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

The applicants proposed attorney information: Susanna P. Lichter. Other appointed attorneys are John L. Slafsky, Aaron D. Hendelman, Christine K. Au-Yeung, Alyssa M. Worsham, Brandon P. Leahy, Chelsea E. Carbone, Chidera N. Anyanwu, Ava R. Miller. Susanna P. Lichter of WILSON SONSINI GOODRICH & ROSATI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      United States
The docket/reference number is 52301-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

Susanna P. Lichter 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: SUSANNA P. LICHTER. SUSANNA P. LICHTER of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      US
The docket/reference number is 52301-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com; trademarks@wsgr.com

The applicants proposed correspondence information: Susanna P. Lichter. Susanna P. Lichter of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      United States
The docket/reference number is 52301-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com; trademarks@wsgr.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant has amended its mark description to address the Examining Attorney's concerns. Specifically, Applicant amends it to read as follows: The mark consists of the stylized word "MACNAUGHTON" appearing in variably shaded gray.


SIGNATURE(S)
Response Signature
Signature: /Susanna P. Lichter/     Date: 01/03/2020
Signatory's Name: Susanna P, Lichter
Signatory's Position: Attorney of record, California state bar member

Signatory's Phone Number: 650.849.3028

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:    SUSANNA P. LICHTER
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304
Mailing Address:    Susanna P. Lichter
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304
        
Serial Number: 88404996
Internet Transmission Date: Fri Jan 03 18:17:31 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020010318173143
3858-88404996-700bbdeb81a77e8c6377b888e8
795050565671cd36a4f68e8730ffa3244f8c9f8c
-N/A-N/A-20200103175402764775