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. 88478796 AVANTAX(Standard Characters, see http://uspto.report/TM/88478796/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Applicant's written response to the Office Action issued on September 10, 2019. has been attached.
Original PDF file:
evi_381223261-20191002125940532786_._Final_Avantax_Response_to_OA.pdf
Converted PDF file(s) ( 42 pages)
Evidence-1
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Evidence-42

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing online information for financial services professionals, namely, commission statements, quarterly reports, and client account information and invoices; Providing a website that provides financial transaction data, financial account management tools, financial reports, and financial records management data
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: Providing online information for financial services professionals, namely, commission statements, quarterly reports, and client account information and invoices; Providing online business and accounting information for financial services professionals, namely, commission statements, quarterly reports, and client account information and invoices; Providing a website that provides financial transaction data, financial account management tools, financial reports, and financial records management data; Offering a website that provides financial services professionals with business and account management data and reports to support their practices.Class 035 for Providing online business and accounting information for financial services professionals, namely, commission statements, quarterly reports, and client account information and invoices; Offering a website that provides financial services professionals with business and account management data and reports to support their practices.
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Providing information, advisory, consultancy, and research services to financial services professionals relating to the fields of financial management, tax planning, and investing; Investment account management services, namely, providing customizable brokerage accounts consisting of mutual funds and individual securities; Fund management services for high-net-worth portfolios; Financial portfolio management; Financial investment brokerage; Securities and commodities brokerage; Insurance brokerage; Financial administration of retirement plans; Providing financial and investment portfolio review and analysis; Financial services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities; Financial planning services, namely, providing information and advice in the fields of retirement planning, estate planning, investment portfolio management, and tax optimization strategies; Providing financial services forms and research services, namely, providing a website for financial services professionals to generate customizable forms for financial and estate planning and to access data and resources related to financial planning
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: Providing information, advisory, consultancy, and research services to financial services professionals relating to the fields of financial management, tax planning, and investing; Providing information, advisory, consultancy, and research services to financial services professionals in the fields of financial management and financial investment advisory services; Investment account management services, namely, providing customizable brokerage accounts consisting of mutual funds and individual securities; Fund management services for high-net-worth portfolios; Financial management services, namely, investment management services offered to high net worth individuals; Financial portfolio management; Financial investment brokerage; Securities and commodities brokerage; Insurance brokerage; Financial administration of retirement plans; Providing financial and investment portfolio review and analysis; Financial services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities; Financial planning services, namely, providing information and advice in the fields of retirement planning, estate planning, investment portfolio management, and tax optimization strategies; Financial planning services, namely, providing information and advice in the fields of retirement planning, estate planning, investment portfolio management, and wealth optimization by analyzing an individual's investments in relation to his or her taxable income and tax bracket; Providing financial services forms and research services, namely, providing a website for financial services professionals to generate customizable forms for financial and estate planning and to access data and resources related to financial planningClass 036 for Providing information, advisory, consultancy, and research services to financial services professionals in the fields of financial management and financial investment advisory services; Investment account management services, namely, providing customizable brokerage accounts consisting of mutual funds and individual securities; Financial management services, namely, investment management services offered to high net worth individuals; Financial portfolio management; Financial investment brokerage; Securities and commodities brokerage; Insurance brokerage; Financial administration of retirement plans; Providing financial and investment portfolio review and analysis; Financial services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities; Financial planning services, namely, providing information and advice in the fields of retirement planning, estate planning, investment portfolio management, and wealth optimization by analyzing an individual's investments in relation to his or her taxable income and tax bracket; Providing financial services forms and research services, namely, providing a website for financial services professionals to generate customizable forms for financial and estate planning and to access data and resources related to financial planning
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing seminars, classes, workshops, and continuing education courses in the fields of financial planning, investing, insurance, financial portfolio management, estate planning, professional money management, financial investment brokerage, business management, business development, marketing, sales methods, leadership, customer relationship management, and technology to support financial services professionals; Professional coaching programs, namely, conducting workshops concerning investment portfolio management for financial and investment advisors; Providing online financial and business publications
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: Educational services, namely, providing seminars, classes, workshops, and continuing education courses in the fields of financial planning, investing, insurance, financial portfolio management, estate planning, professional money management, financial investment brokerage, business management, business development, marketing, sales methods, leadership, customer relationship management, and technology to support financial services professionals; Professional coaching programs, namely, conducting workshops concerning investment portfolio management for financial and investment advisors; Providing online financial and business publications; Providing online articles, reports, and white papers in the fields of financial advising and investing.Class 041 for Educational services, namely, providing seminars, classes, workshops, and continuing education courses in the fields of financial planning, investing, insurance, financial portfolio management, estate planning, professional money management, financial investment brokerage, business management, business development, marketing, sales methods, leadership, customer relationship management, and technology to support financial services professionals; Professional coaching programs, namely, conducting workshops concerning investment portfolio management for financial and investment advisors; Providing online articles, reports, and white papers in the fields of financial advising and investing.
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing online non-downloadable software to financial services professionals for the creation and presentation of assessment reports and financial plans; Providing online non-downloadable software for the preparation of legal documents, namely, wills and estate planning documents; Providing a website featuring online non-downloadable software in the financial planning field, namely, software as a service (SAAS) for use by financial services professionals to design, assess, manage, and report financial plans, conduct financial and investment transactions, and assess and manage financial portfolios and investments; Computer services, namely, providing online network-based indexes of information, sites, and other resources related to financial services; Help desk support services provided online and via telephone to assist with financial services
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: Providing online non-downloadable software to financial services professionals for the creation and presentation of assessment reports and financial plans; Providing online non-downloadable software for the preparation of legal documents, namely, wills and estate planning documents; Providing a website featuring online non-downloadable software in the financial planning field, namely, software as a service (SAAS) for use by financial services professionals to design, assess, manage, and report financial plans, conduct financial and investment transactions, and assess and manage financial portfolios and investments; Providing a website featuring online non-downloadable software in the financial planning field, namely, software as a service (SAAS) featuring software for use by financial services professionals to design, assess, manage, and report financial plans, conduct financial and investment transactions, and assess and manage financial portfolios and investments; Computer services, namely, providing online network-based indexes of information, sites, and other resources related to financial services; Computer services, namely, creating online network-based indexes of information, sites, and other resources related to financial services; Help desk support services provided online and via telephone to assist with financial services; Computer technology support services, namely, help desk support services.Class 042 for Providing online non-downloadable software to financial services professionals for the creation and presentation of assessment reports and financial plans; Providing online non-downloadable software for the preparation of legal documents, namely, wills and estate planning documents; Providing a website featuring online non-downloadable software in the financial planning field, namely, software as a service (SAAS) featuring software for use by financial services professionals to design, assess, manage, and report financial plans, conduct financial and investment transactions, and assess and manage financial portfolios and investments; Computer services, namely, creating online network-based indexes of information, sites, and other resources related to financial services; Computer technology support services, namely, help desk support services.
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: Cheryl P. Leb. Cheryl P. Leb of KELLY HART & HALLMAN LLP, is located at

      SUITE 2500
      201 MAIN STREET
      FORT WORTH, Texas 76102
      US
The docket/reference number is 13701-0100.

The phone number is 817-878-3547.

The email address is trademark.uspto@kellyhart.com

The applicants proposed attorney information: Cheryl P. Leb. Other appointed attorneys are Leslie M. Darby. Cheryl P. Leb of KELLY HART & HALLMAN 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

      SUITE 2500
      201 MAIN STREET
      FORT WORTH, Texas 76102
      United States
The docket/reference number is 13701-0100.

The phone number is 817-878-3547.

The email address is trademark.uspto@kellyhart.com

Cheryl P. Leb 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: CHERYL P. LEB. CHERYL P. LEB of KELLY HART & HALLMAN LLP, is located at

      SUITE 2500
      201 MAIN STREET
      FORT WORTH, Texas 76102
      US
The docket/reference number is 13701-0100.

The phone number is 817-878-3547.

The email address is trademark.uspto@kellyhart.com; cheryl.leb@kellyhart.com; leslie.darby@kellyhart.com

The applicants proposed correspondence information: Cheryl P. Leb. Cheryl P. Leb of KELLY HART & HALLMAN LLP, is located at

      SUITE 2500
      201 MAIN STREET
      FORT WORTH, Texas 76102
      United States
The docket/reference number is 13701-0100.

The phone number is 817-878-3547.

The email address is trademark.uspto@kellyhart.com; cheryl.leb@kellyhart.com; leslie.darby@kellyhart.com

SIGNATURE(S)
Response Signature
Signature: /cherylleb/     Date: 10/02/2019
Signatory's Name: Cheryl P. Leb
Signatory's Position: Attorney of Record, Texas State Bar Member

Signatory's Phone Number: 817-878-3547

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:    CHERYL P. LEB
   KELLY HART & HALLMAN LLP
   SUITE 2500
   201 MAIN STREET
   FORT WORTH, Texas 76102
Mailing Address:    Cheryl P. Leb
   KELLY HART & HALLMAN LLP
   SUITE 2500
   201 MAIN STREET
   FORT WORTH, Texas 76102
        
Serial Number: 88478796
Internet Transmission Date: Wed Oct 02 13:16:16 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191002131616644
711-88478796-610357a424127c3a9a17de04db3
d0a87cdea8ad8cb8b0246a8471911cdb3fb2bf-N
/A-N/A-20191002125940532786