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. 88706851 REMEDY(Standard Characters, see http://uspto.report/TM/88706851/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: The attached documents are as follows: 1. Applicant's argument in support of its Response to Nonfinal Office Action 2. Co-Existence Agreement with prior-applicant cited in Nonfinal Office Action 3. Voluntary Amendment of services filed by prior-applicant 4. Substitute/Additional Specimen
Original PDF file:
evi_2091014636-2020050713 0500446029_._Response_to_ Office_action__5-7-2020_.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_2091014636-2020050713 0500446029_._RemedyArts_T rademark__Co-existence_Ag reement_fully_executed.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_2091014636-2020050713 0500446029_._Voluntary_Am endment__4-9-2020_.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_2091014636-2020050713 0500446029_._Specimen_-_n ew__5-7-2020_.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, customer relations, online community building and digital word of mouth communications; Providing advertising, marketing and promotional services, namely, development of advertising campaigns for television, print media and web pages.; Video production services in the field of employment recruiting; Post-production editing services for video and audio commercials
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/01/2007 and first used in commerce at least as early as 09/01/2007 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Development of advertising campaigns for television, print media and web pages via production of video and audio content; Development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, customer relations, online community building and digital word of mouth communications; Video production services in the field of employment recruiting; Providing advertising, marketing and promotional services, namely, development of advertising campaigns for television, print media and web pages.; Post-production editing services for video and audio commercialsClass 035 for Development of advertising campaigns for television, print media and web pages via production of video and audio content; Video production services in the field of employment recruiting; Post-production editing services for video and audio commercials
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/01/2007 and first used in commerce at least as early as 09/01/2007 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of Screenshots of Applicant's website reflecting the mark used in conjunction with marketing and advertising services via production of video and audio content..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
JPG file(s):Specimen File1Specimen File2
Original PDF file:
SPU0-2091014636-202005071 30500446029_._Specimen_-_ new__5-7-2020_.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Correspondence Information (current):
      MICHAEL A. PENN
      PRIMARY EMAIL FOR CORRESPONDENCE: mpenn@briskinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tm@briskinlaw.com

The docket/reference number is 35636-100.
Correspondence Information (proposed):
      Michael A. Penn
      PRIMARY EMAIL FOR CORRESPONDENCE: mpenn@briskinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tm@briskinlaw.com

The docket/reference number is 35636-100.

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

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Michael A. Penn/      Date: 05/07/2020
Signatory's Name: Michael A. Penn
Signatory's Position: Attorney of Record, Georgia State Bar member
Signatory's Phone Number: 770-410-1555


Response Signature
Signature: /Michael A. Penn/     Date: 05/07/2020
Signatory's Name: Michael A. Penn
Signatory's Position: Attorney of Record, Georgia Bar Member

Signatory's Phone Number: 770-410-1555

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:    MICHAEL A. PENN
   BRISKIN, CROSS & SANFORD, LLC
   SUITE D
   1001 CAMBRIDGE SQUARE
   ALPHARETTA, Georgia 30009
Mailing Address:    Michael A. Penn
   BRISKIN, CROSS & SANFORD, LLC
   SUITE D
   1001 CAMBRIDGE SQUARE
   ALPHARETTA, Georgia 30009
        
Serial Number: 88706851
Internet Transmission Date: Thu May 07 13:42:05 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020050713420548
7955-88706851-710861d9e3ab958ef61553a91a
c42283d1734966c45917e7e2bcf51184457cb4e8
-N/A-N/A-20200507130500446029