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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88478796 |
LAW OFFICE ASSIGNED |
LAW OFFICE 116 |
MARK SECTION |
MARK |
http://uspto.report/TM/88478796/mark.png |
LITERAL ELEMENT |
AVANTAX |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_381223261-20191002125940532786_._Final_Avantax_Response_to_OA.pdf |
CONVERTED PDF FILE(S)
(42 pages) |
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DESCRIPTION OF EVIDENCE FILE |
Applicant's written response to the Office Action issued on September 10, 2019. |
GOODS AND/OR SERVICES SECTION (009)(no change) |
GOODS AND/OR SERVICES SECTION (016)(no change) |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
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. |
FINAL DESCRIPTION |
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) |
GOODS AND/OR SERVICES SECTION (036)(current) |
INTERNATIONAL CLASS |
036 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (036)(proposed) |
INTERNATIONAL CLASS |
036 |
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 planning |
FINAL DESCRIPTION |
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) |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
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 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
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. |
FINAL 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 articles, reports, and white papers in the fields of financial advising and investing. |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
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; 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 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
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. |
FINAL 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) 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) |
ATTORNEY SECTION (current) |
NAME |
Cheryl P. Leb |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
KELLY HART & HALLMAN LLP |
INTERNAL ADDRESS |
SUITE 2500 |
STREET |
201 MAIN STREET |
CITY |
FORT WORTH |
STATE |
Texas |
POSTAL CODE |
76102 |
COUNTRY |
US |
PHONE |
817-878-3547 |
EMAIL |
trademark.uspto@kellyhart.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
13701-0100 |
ATTORNEY SECTION (proposed) |
NAME |
Cheryl P. Leb |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
KELLY HART & HALLMAN LLP |
INTERNAL ADDRESS |
SUITE 2500 |
STREET |
201 MAIN STREET |
CITY |
FORT WORTH |
STATE |
Texas |
POSTAL CODE |
76102 |
COUNTRY |
United States |
PHONE |
817-878-3547 |
EMAIL |
trademark.uspto@kellyhart.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
13701-0100 |
OTHER APPOINTED ATTORNEY |
Leslie M. Darby |
CORRESPONDENCE SECTION (current) |
NAME |
CHERYL P. LEB |
FIRM NAME |
KELLY HART & HALLMAN LLP |
INTERNAL ADDRESS |
SUITE 2500 |
STREET |
201 MAIN STREET |
CITY |
FORT WORTH |
STATE |
Texas |
POSTAL CODE |
76102 |
COUNTRY |
US |
PHONE |
817-878-3547 |
EMAIL |
trademark.uspto@kellyhart.com; cheryl.leb@kellyhart.com; leslie.darby@kellyhart.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
13701-0100 |
CORRESPONDENCE SECTION (proposed) |
NAME |
Cheryl P. Leb |
FIRM NAME |
KELLY HART & HALLMAN LLP |
INTERNAL ADDRESS |
SUITE 2500 |
STREET |
201 MAIN STREET |
CITY |
FORT WORTH |
STATE |
Texas |
POSTAL CODE |
76102 |
COUNTRY |
United States |
PHONE |
817-878-3547 |
EMAIL |
trademark.uspto@kellyhart.com; cheryl.leb@kellyhart.com; leslie.darby@kellyhart.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
13701-0100 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/cherylleb/ |
SIGNATORY'S NAME |
Cheryl P. Leb |
SIGNATORY'S POSITION |
Attorney of Record, Texas State Bar Member |
SIGNATORY'S PHONE NUMBER |
817-878-3547 |
DATE SIGNED |
10/02/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Oct 02 13:16:16 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
191002131616644711-884787
96-610357a424127c3a9a17de
04db3d0a87cdea8ad8cb8b024
6a8471911cdb3fb2bf-N/A-N/
A-20191002125940532786 |
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
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39
Evidence-40
Evidence-41
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