Response to Office Action

PRISM SPECTRUM OF POSSIBILITIES

Cushman & Wakefield, Inc.

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88519027
LAW OFFICE ASSIGNED LAW OFFICE 116
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88519027/mark.png
LITERAL ELEMENT PRISM SPECTRUM OF POSSIBILITIES
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
The color(s) red, yellow, blue, grey is/are claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the words PRISM SPECTRUM OF POSSIBILITIES in stylized form. The word PRISM is in large red letters. The dot of the "I" in PRISM is a triangular shape, showing the colors red, blue and yellow. The words SPECTRUM OF POSSIBILITIES is in grey, smaller font and appears underneath the word PRISM.
GOODS AND/OR SERVICES SECTION (036)(no change)
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Providing an on-line non-downloadable tool for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Providing an on-line non-downloadable tool for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings; Providing on-line non-downloadable software for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings
FINAL DESCRIPTION
Providing on-line non-downloadable software for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings
FILING BASIS Section 1(b)
ADDITIONAL STATEMENTS SECTION
COLOR(S) CLAIMED
(If applicable)
The color(s) red, dark red, blue, green, orange, and gray is/are claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the stylized wording "PRISM SPECTRUM OF POSSIBILITIES". The wording "PRISM" appears in red and dark red with the dot of the "I" in "PRISM" appearing as a triangular shape, showing the colors red, dark red, blue, green, orange and yellow. The words "SPECTRUM OF POSSIBILITIES" appears in gray below the word "PRISM".
ATTORNEY SECTION (current)
NAME Douglas N. Masters
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME LOEB & LOEB LLP
STREET 321 N. CLARK STREET, SUITE 2300
CITY CHICAGO
STATE Illinois
POSTAL CODE 60654
COUNTRY US
PHONE 312-464-3100
FAX 312-464-3111
EMAIL chicagopto@loeb.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 223376-01241
ATTORNEY SECTION (proposed)
NAME Douglas N. Masters
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME LOEB & LOEB LLP
STREET 321 N. CLARK STREET, SUITE 2300
CITY CHICAGO
STATE Illinois
POSTAL CODE 60654
COUNTRY United States
PHONE 312-464-3100
FAX 312-464-3111
EMAIL trademark@loeb.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 223376-01241
OTHER APPOINTED ATTORNEY all authorized attorneys of Loeb & Loeb LLP
CORRESPONDENCE SECTION (current)
NAME DOUGLAS N. MASTERS
FIRM NAME LOEB & LOEB LLP
STREET 321 N. CLARK STREET, SUITE 2300
CITY CHICAGO
STATE Illinois
POSTAL CODE 60654
COUNTRY US
PHONE 312-464-3100
FAX 312-464-3111
EMAIL chicagopto@loeb.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 223376-01241
CORRESPONDENCE SECTION (proposed)
NAME Douglas N. Masters
FIRM NAME LOEB & LOEB LLP
STREET 321 N. CLARK STREET, SUITE 2300
CITY CHICAGO
STATE Illinois
POSTAL CODE 60654
COUNTRY United States
PHONE 312-464-3100
FAX 312-464-3111
EMAIL trademark@loeb.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 223376-01241
SIGNATURE SECTION
RESPONSE SIGNATURE /Elisabeth K. O'Neill/
SIGNATORY'S NAME Elisabeth K. O'Neill
SIGNATORY'S POSITION Attorney of record, Loeb & Loeb LLP, Illinois bar member
SIGNATORY'S PHONE NUMBER 312-464-3100
DATE SIGNED 12/03/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Dec 03 11:40:38 EST 2019
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XX-2
0191203114038747376-88519
027-700b1bb598ee387539471
870d075da8f6049d0a1392020
1f89f61bc0ad5a6e70d0-N/A-
N/A-20191203102813680060



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. 88519027 PRISM SPECTRUM OF POSSIBILITIES (Stylized and/or with Design, see http://uspto.report/TM/88519027/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing an on-line non-downloadable tool for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings
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 an on-line non-downloadable tool for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings; Providing on-line non-downloadable software for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listingsClass 042 for Providing on-line non-downloadable software for determining availability of commercial real estate space, for viewing individual building information, and for comparing space requirements, market data, and current listings
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: Douglas N. Masters. Douglas N. Masters of LOEB & LOEB LLP, is located at

      321 N. CLARK STREET, SUITE 2300
      CHICAGO, Illinois 60654
      US
The docket/reference number is 223376-01241.

The phone number is 312-464-3100.

The fax number is 312-464-3111.

The email address is chicagopto@loeb.com

The applicants proposed attorney information: Douglas N. Masters. Other appointed attorneys are all authorized attorneys of Loeb & Loeb LLP. Douglas N. Masters of LOEB & LOEB 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

      321 N. CLARK STREET, SUITE 2300
      CHICAGO, Illinois 60654
      United States
The docket/reference number is 223376-01241.

The phone number is 312-464-3100.

The fax number is 312-464-3111.

The email address is trademark@loeb.com

Douglas N. Masters 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: DOUGLAS N. MASTERS. DOUGLAS N. MASTERS of LOEB & LOEB LLP, is located at

      321 N. CLARK STREET, SUITE 2300
      CHICAGO, Illinois 60654
      US
The docket/reference number is 223376-01241.

The phone number is 312-464-3100.

The fax number is 312-464-3111.

The email address is chicagopto@loeb.com

The applicants proposed correspondence information: Douglas N. Masters. Douglas N. Masters of LOEB & LOEB LLP, is located at

      321 N. CLARK STREET, SUITE 2300
      CHICAGO, Illinois 60654
      United States
The docket/reference number is 223376-01241.

The phone number is 312-464-3100.

The fax number is 312-464-3111.

The email address is trademark@loeb.com

ADDITIONAL STATEMENTS
Color Claim
The color(s) red, dark red, blue, green, orange, and gray is/are claimed as a feature of the mark.

Description of mark
The mark consists of the stylized wording "PRISM SPECTRUM OF POSSIBILITIES". The wording "PRISM" appears in red and dark red with the dot of the "I" in "PRISM" appearing as a triangular shape, showing the colors red, dark red, blue, green, orange and yellow. The words "SPECTRUM OF POSSIBILITIES" appears in gray below the word "PRISM".

SIGNATURE(S)
Response Signature
Signature: /Elisabeth K. O'Neill/     Date: 12/03/2019
Signatory's Name: Elisabeth K. O'Neill
Signatory's Position: Attorney of record, Loeb & Loeb LLP, Illinois bar member

Signatory's Phone Number: 312-464-3100

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:    DOUGLAS N. MASTERS
   LOEB & LOEB LLP
   
   321 N. CLARK STREET, SUITE 2300
   CHICAGO, Illinois 60654
Mailing Address:    Douglas N. Masters
   LOEB & LOEB LLP
   321 N. CLARK STREET, SUITE 2300
   CHICAGO, Illinois 60654
        
Serial Number: 88519027
Internet Transmission Date: Tue Dec 03 11:40:38 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019120311403874
7376-88519027-700b1bb598ee387539471870d0
75da8f6049d0a13920201f89f61bc0ad5a6e70d0
-N/A-N/A-20191203102813680060



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