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. 88411215 FINANCIAL OPERATING REPORT(Standard Characters, see http://uspto.report/TM/88411215/mark.png) has been amended as follows:

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

Applicant respectfully disagrees with the Examining Attorney's conclusion that the applied-for mark FINANCIAL OPERATING REPORT should be refused registration because of a likelihood of confusion with the registered trademark FINANCIAL OPERATIONS NETWORKS. The two three-word trademarks have only one word in common, that of "financial." The two remaining words in Applicant's mark are "operating report," while the two remaining words in Registrant's marks are "operations networks." Comparing the two marks, especially the words following "financial," it is clear that they are not confusingly similar. Only an individual who does not understand the meaning or pronunciation of "operating report" as opposed to "operations networks" would find the two marks confusingly similar or would be confused by their similarities, of which there are almost none. Likewise, the services of the two marks are not so related that an individual would conclude that they originated from the same source. The business consultation services provided in connection with FINANCIAL OPERATING REPORT are those in the field of "healthcare retail food service operations." The services provided in connection with FINANCIAL OPERATIONS NETWORKS are entirely different, unrelated to healthcare retail food service operations. As amended in this Response, the services are further clarified and divided into two separate international classes, further demonstrating the remote, if any, link to Registrant's services. Accordingly, Applicant respectfully requests that the initial refusal to register the trademark on the ground of likelihood of confusion be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consultation services in the field of healthcare retail food service operations, namely, providing non-downloadable software for use in healthcare food service operations for improvement and control of cost management
Original Filing Basis:
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 12/31/2002 and first used in commerce at least as early as 12/31/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Business consultation services in the field of healthcare retail food service operations, namely, providing non-downloadable software for use in healthcare food service operations for improvement and control of cost management; Business consultation services in the field of healthcare retail food service operations, namely, providing business cost management.Class 035 for Business consultation services in the field of healthcare retail food service operations, namely, providing business cost management.
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 12/31/2002 and first used in commerce at least as early as 12/31/2002 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing online non-downloadable software in the field of healthcare retail food operations for improvement and control of cost management.
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 12/31/2002 and first used in commerce at least as early as 12/31/2002 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 . The specimen(s) submitted consists of User's computer screenshot of FINANCIAL OPERATING REPORT; promotional brochure .
"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:
SPN0-66281658-20191209162914757428_._FINANCIAL_OPERATING_REPORT_SCREENSHOT.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN0-66281658-20191209162914757428_._FINANCIAL_OPERATING_REPORT_BROCHURE.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3

The applicant's current attorney information: Clay A. Tillack. Clay A. Tillack of SCHIFF HARDIN LLP, is located at

      P.O. BOX 06079
      CHICAGO, Illinois 60606-0079
      US
The docket/reference number is 38876.

The phone number is 312-258-5758.

The email address is trademarks@schiffhardin.com

The applicants proposed attorney information: Clay A. Tillack. Other appointed attorneys are Christine Feller. Clay A. Tillack of SCHIFF HARDIN 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

      P.O. BOX 06079
      CHICAGO, Illinois 60606-0079
      United States
The docket/reference number is 38876.

The phone number is 312-258-5758.

The email address is trademarks@schiffhardin.com

Clay A. Tillack 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: CLAY A. TILLACK. CLAY A. TILLACK of SCHIFF HARDIN LLP, is located at

      P.O. BOX 06079
      CHICAGO, Illinois 60606-0079
      US
The docket/reference number is 38876.

The phone number is 312-258-5758.

The email address is trademarks@schiffhardin.com

The applicants proposed correspondence information: Clay A. Tillack. Clay A. Tillack of SCHIFF HARDIN LLP, is located at

      233 South Wacker Drive
      233 South Wacker Drive
      Chicago, Illinois 60606
      United States
The docket/reference number is 38876.

The phone number is 3122585758.

The email address is trademarks@schiffhardin.com

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


Miscellaneous Statement
Applicant believes the specimens previously provided make it clear to the consumer that he or she will be using software to assist in the conduct of healthcare retail food service operations. Applicant has attached additional specimens to show the use of the trademark on a user's computer screen and to show the description of the services to be provided to the user.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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: /Gloria Gibbs/      Date: 12/09/2019
Signatory's Name: Gloria Gibbs
Signatory's Position: Assistant General Counsel
Signatory's Phone Number: 3122585758


Response Signature
Signature: /Clay A Tillack/     Date: 12/09/2019
Signatory's Name: Clay A Tillack
Signatory's Position: Attorney of Record, Illinois bar member

Signatory's Phone Number: 312-258-5758

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:    CLAY A. TILLACK
   SCHIFF HARDIN LLP
   
   P.O. BOX 06079
   CHICAGO, Illinois 60606-0079
Mailing Address:    Clay A. Tillack
   SCHIFF HARDIN LLP
   233 South Wacker Drive
   233 South Wacker Drive
   Chicago, Illinois 60606
        
RAM Sale Number: 88411215
RAM Accounting Date: 12/09/2019
        
Serial Number: 88411215
Internet Transmission Date: Mon Dec 09 17:25:33 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.X-201912091725338699
96-88411215-70079967ded38c352f968c6dff7f
607f729cf24a5317ce776443d21ab1f85765a-CC
-25326080-20191209162914757428