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. 88495661 BANNER SOCIETY(Standard Characters, see http://uspto.report/TM/88495661/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Response, and Exhibit A to Response. has been attached.
Original PDF file:
evi_20447350-20200129152833029798_._BANNER_SOCIETY_office_action_response.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_20447350-20200129152833029798_._BANNER_SOCIETY_-_Exhibit_A.pdf
Converted PDF file(s) ( 12 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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing information, news, and commentary in the field of sports; providing a website featuring entertainment information in the field of sports; providing online non-downloadable articles, audio, videos, images, and multimedia content in the field of sports; entertainment services, namely, providing podcasts in the field of sports; providing online newsletters in the field of sports; online journals, namely, blogs in the field of sports; providing online non-downloadable videos in the field of sports; entertainment services, namely, providing an ongoing online video series in the field of sports; educational and entertainment services, namely, a continuing program about sports accessible by radio, television, satellite, audio, video, and computer networks; production and distribution of videos, audio, ongoing programs, and multimedia content
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, news, and commentary in the field of sports; providing a website featuring entertainment information in the field of sports; providing online non-downloadable articles, audio, videos, images, and multimedia content in the field of sports; entertainment services, namely, providing podcasts in the field of sports; providing online newsletters in the field of sports; online journals, namely, blogs in the field of sports; providing online non-downloadable videos in the field of sports; entertainment services, namely, providing an ongoing online video series in the field of sports; educational and entertainment services, namely, a continuing program about sports accessible by radio, television, satellite, audio, video, and computer networks; production and distribution of videos, audio, ongoing programs, and multimedia contentClass 041 for Providing information, news, and commentary in the field of sports; providing a website featuring entertainment information in the field of sports; providing online non-downloadable articles, audio, videos, images, and multimedia content in the field of sports; entertainment services, namely, providing podcasts in the field of sports; providing online newsletters in the field of sports; online journals, namely, blogs in the field of sports; providing online non-downloadable videos in the field of sports; entertainment services, namely, providing an ongoing online video series in the field of sports; educational and entertainment services, namely, a continuing program about sports accessible by radio, television, satellite, audio, video, and computer networks
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: Jason J. Mazur. Jason J. Mazur of ARENT FOX LLP, is located at

      1717 K STREET, NW
      WASHINGTON, District of Columbia 20006-5344
      US
The docket/reference number is 031257.00000.

The phone number is 202-857-6000.

The fax number is 202-857-6395.

The email address is tmdocket@arentfox.com

The applicants proposed attorney information: Jason J. Mazur. Jason J. Mazur of ARENT FOX LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1717 K STREET, NW
      WASHINGTON, District of Columbia 20006-5344
      United States
The docket/reference number is 031257.00000.

The phone number is 202-857-6000.

The fax number is 202-857-6395.

The email address is tmdocket@arentfox.com

Jason J. Mazur 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: JASON J. MAZUR. JASON J. MAZUR of ARENT FOX LLP, is located at

      1717 K STREET, NW
      WASHINGTON, District of Columbia 20006-5344
      US
The docket/reference number is 031257.00000.

The phone number is 202-857-6000.

The fax number is 202-857-6395.

The email address is tmdocket@arentfox.com; jason.mazur@arentfox.com; craig.horak@arentfox.com

The applicants proposed correspondence information: Jason J. Mazur. Jason J. Mazur of ARENT FOX LLP, is located at

      1717 K STREET, NW
      WASHINGTON, District of Columbia 20006-5344
      United States
The docket/reference number is 031257.00000.

The phone number is 202-857-6000.

The fax number is 202-857-6395.

The email address is tmdocket@arentfox.com; jason.mazur@arentfox.com

SIGNATURE(S)
Response Signature
Signature: /Jason J. Mazur/     Date: 01/29/2020
Signatory's Name: Jason J. Mazur
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202.857.6000

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:    JASON J. MAZUR
   ARENT FOX LLP
   
   1717 K STREET, NW
   WASHINGTON, District of Columbia 20006-5344
Mailing Address:    Jason J. Mazur
   ARENT FOX LLP
   1717 K STREET, NW
   WASHINGTON, District of Columbia 20006-5344
        
Serial Number: 88495661
Internet Transmission Date: Wed Jan 29 15:34:58 EST 2020
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-202001291534588491
82-88495661-7006aee47b72e65e80a298f725ba
7d6714527a2391020ea67ccce26544c1b5125-N/
A-N/A-20200129152833029798