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. 88460811 DEALMAKERS(Standard Characters, see http://uspto.report/TM/88460811/mark.png) has been amended as follows:

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

Examiner alleges a 2(d) likelihood of confusion with Applicant?s mark DEALMAKERS for ?Arranging and conducting business conferences? in International Class 35, and Registrant?s mark SMART BUSINESS DEALMAKERS for ?Providing on-line non-downloadable electronic newsletters delivered by email and on-line non- downloadable publications in the nature of magazine and newsletter articles, all in the fields of business, mergers and acquisitions, and entrepreneurship? in International Class 41. Applicant respectfully disagrees due to the difference in the marks and services. Applicant's mark begins with "Dealmakers" in contrast to Registrant's mark which begins with "Smart". Further, Registrant's mark is three words or 300% longer than Applicants. In addition, Applicant's services has been amended to "Arranging and conducting business conferences, excluding online electronic newsletters" to further differentiate its services. Thus, Applicant requests the 2(d) refusal to be withdrawn.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 Arranging and conducting business conferences
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 01/15/2008 and first used in commerce at least as early as 01/15/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Arranging and conducting business conferences; Arranging and conducting business conferences, excluding online electronic newslettersClass 035 for Arranging and conducting business conferences, excluding online electronic newsletters
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 02/21/2011 and first used in commerce at least as early as 02/21/2011 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of marketing material - sponsor package .
"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:
SPU0-2607fb9017cb438335bca6753bc2b807-20200203234304682134_._Israel_Dealmakers_Summit_2011_Sponsor_Overview.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

The applicant hereby appoints Karen Hwang. Other appointed attorneys are Patrick Schweihs. Karen Hwang of Copymark Law Group, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      543 Brier Street
      Kenilworth, Illinois 60043
      United States
to submit this Response to Office Action Form on behalf of the applicant.

The email address is support@copymarklaw.com

Karen Hwang 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: LANDMARK VENTURES USA INC.. LANDMARK VENTURES USA INC. of LANDMARK VENTURES USA INC., is located at

      505 N VILLAGE AVENUE
      505 N VILLAGE AVENUE
      ROCKVILLE CENTRE, New York 11570
      US

The phone number is 516-763-4223.

The email address is jrivera@landmarkventures.com

The applicants proposed correspondence information: Karen Hwang. Karen Hwang of Copymark Law Group, LLC, is located at

      543 Brier Street
      Kenilworth, Illinois 60043
      United States

The email address is support@copymarklaw.com

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: /khwang/      Date: 02/03/2020
Signatory's Name: Karen Hwang
Signatory's Position: Attorney of record, IL bar member

Response Signature
Signature: /khwang/     Date: 02/03/2020
Signatory's Name: Karen Hwang
Signatory's Position: Attorney of record, IL bar member

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:    LANDMARK VENTURES USA INC.
   LANDMARK VENTURES USA INC.
   505 N VILLAGE AVENUE
   505 N VILLAGE AVENUE
   ROCKVILLE CENTRE, New York 11570
Mailing Address:    Karen Hwang
   Copymark Law Group, LLC
   543 Brier Street
   Kenilworth, Illinois 60043
        
Serial Number: 88460811
Internet Transmission Date: Mon Feb 03 23:49:46 EST 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200203234946656954-88460811-
700fc7cd45d4c66194366f13c3b6d0b391a69413
ba7dac89e3aead71aa556893-N/A-N/A-2020020
3234304682134