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. 88582261 AMA AMERICAN MANAGEMENT ASSOCIATION CERTIFIED PROFESSIONAL IN MANAGEMENT CPM (Stylized and/or with Design, see http://uspto.report/TM/88582261/mark.png) has been amended as follows:

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

Please see the argument attached hereto as a .pdf.

EVIDENCE
Evidence in the nature of Argument in response to office action; Exhibit A - registrations of American Management Association International has been attached.
Original PDF file:
evi_18017877170-20191206173545185935_._AMA_-_AMA_CERTIFIED_PROFESSIONAL_IN_MANAGEMENT_CPM_ROA_final.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_18017877170-20191206173545185935_._exh_a.pdf
Converted PDF file(s) ( 17 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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management; educational services, namely, the development and offering of educational programs and exams in the field of business management
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 courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and prerecorded online audio and video programs in the field of business management via the Internet; providing live and non-downloadable prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management; educational services, namely, the development and offering of educational programs and exams in the field of business managementClass 041 for Educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and non-downloadable prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management; educational services, namely, the development and offering of educational programs and exams in the field of business management
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 Testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of business management
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: Testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of business management; Testing, analysis, and evaluation of the knowledge, skills and abilities of others for the purpose of identifying and recognizing those individuals who have acquired qualifications and expertise in the field of business managementClass 042 for Testing, analysis, and evaluation of the knowledge, skills and abilities of others for the purpose of identifying and recognizing those individuals who have acquired qualifications and expertise in the field of business management
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use ASSOCIATION apart from the mark as shown.


Description of mark
The mark consists of a hexagon design. At the top of the hexagon are the letters "AMA" in which the first "A" contains a triangle design, over the words "AMERICAN MANAGEMENT ASSOCIATION" in stylized letters. At the bottom of the hexagon are the letters "CPM" in stylized letters. Overlaid on top of the hexagon are the words "CERTIFIED PROFESSIONAL IN MANAGEMENT," in stylized letters, with single horizontal lines above and below the words.

SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
AMERICAN MANAGEMENT ASSOCIATION has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 5241799, 2948665, 2069326


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /suzanna m m morales/     Date: 12/09/2019
Signatory's Name: Suzanna M. M. Morales
Signatory's Position: Attorney for Applicant, New York and New Jersey bar member

Signatory's Phone Number: 212-226-5054

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.

        
Serial Number: 88582261
Internet Transmission Date: Mon Dec 09 12:01:32 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201912091201325
45628-88582261-70019681c27801a759622feed
6311867e559e599c8296a8986e73da47b56cbb-N
/A-N/A-20191209114924375111