TEAS Response to Suspension Inquiry

PTO- 1822

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1822

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88627766 SUN LIFE (Stylized and/or with Design, see http://uspto.report/TM/88627766/mark.png) has been amended as follows:
FOREIGN APPLICATION(S)
The foreign application(s) No(s). 1952758 being used as the basis for a priority claim under Section 44(d) of the Trademark Act has/have not yet matured into a registration in the applicant's country of origin. I hereby request that the application be re-suspended.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for (Based on Intent to Use) Underwriting, issuing, and administration of life, health, and disability insurance; management, administration and distribution of investment products, including mutual funds; financial services, namely, asset, portfolio, and investment management services; investment of funds for others using a liability driven investment strategy; investment of funds for others in fixed income products; commercial lending; real estate investment and management services; mortgage lending and investment services; (Based on 44(d) Priority Application) and (Based on Intent to Use) financial services, namely, insurance services in the nature of underwriting, issuing, and administration of life, health, and disability insurance; providing, managing and administering benefit plans concerning insurance and finance; mutual fund investment services; providing employee health and wellness management solutions, namely, providing counseling and consulting in the context of healthcare insurance benefits and wellness programs
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1952758 filed 03/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: (Based on Intent to Use) Underwriting, issuing, and administration of life, health, and disability insurance; management, administration and distribution of investment products, including mutual funds; financial services, namely, asset, portfolio, and investment management services; investment of funds for others using a liability driven investment strategy; investment of funds for others in fixed income products; commercial lending; real estate investment and management services; mortgage lending and investment services; (Based on 44(d) Priority Application) and (Based on Intent to Use) financial services, namely, insurance services in the nature of underwriting, issuing, and administration of life, health, and disability insurance; providing, managing and administering benefit plans concerning insurance and finance; mutual fund investment services; providing employee health and wellness management solutions, namely, providing counseling and consulting in the context of healthcare insurance benefits and wellness programs; providing employee health and wellness management solutions, namely, providing counseling and consulting in the context of healthcare insurance benefitsClass 036 for (Based on Intent to Use) Underwriting, issuing, and administration of life, health, and disability insurance; management, administration and distribution of investment products, including mutual funds; financial services, namely, asset, portfolio, and investment management services; investment of funds for others using a liability driven investment strategy; investment of funds for others in fixed income products; commercial lending; real estate investment and management services; mortgage lending and investment services; (Based on 44(d) Priority Application) and (Based on Intent to Use) financial services, namely, insurance services in the nature of underwriting, issuing, and administration of life, health, and disability insurance; providing, managing and administering benefit plans concerning insurance and finance; mutual fund investment services; providing employee health and wellness management solutions, namely, providing counseling and consulting in the context of healthcare insurance benefits
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1952758 filed 03/21/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.


ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "LIFE" in Class 36 apart from the mark as shown.
Correspondence Information (current):
      Douglas R. Wolf
      PRIMARY EMAIL FOR CORRESPONDENCE: drwtrademarks@wolfgreenfield.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): azstrademarks@wolfgreenfield.com
Correspondence Information (proposed):
      Douglas R. Wolf
      PRIMARY EMAIL FOR CORRESPONDENCE: drwtrademarks@wolfgreenfield.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): azstrademarks@wolfgreenfield.com

The docket/reference number is S14102021600.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

Response Suspension Inquiry Signature
Signature: /Amanda B. Slade/     Date: 03/03/2021
Signatory's Name: Amanda B Slade
Signatory's Position: Associate Attorney, Wolf Greenfield & Sacks, P.C., MA Bar Member
Signatory's Phone Number: 16176468193
Signature method: Sent to third party for signature

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 R. Wolf
   WOLF, GREENFIELD & SACKS, P.C.
   
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts
Mailing Address:    Douglas R. Wolf
   WOLF, GREENFIELD & SACKS, P.C.
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
        
Serial Number: 88627766
Internet Transmission Date: Thu Mar 04 08:59:34 ET 2021
TEAS Stamp: USPTO/RSI-XXX.XX.X.XXX-20210304085934841
825-88627766-770a0c148b465ac5d746f4db182
3fc6f09d3a3115cf1ea845b7a252064534aba5-N
/A-N/A-20210303165708056415