| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88782514 |
| LAW OFFICE ASSIGNED | LAW OFFICE 123 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | EMERSON |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
| In response to the issue regarding potential likelihood of confusion between the registrations "EMERSON COLLECTIVE" (Reg. No. 4702344), "EMERSON COLLECTIVE (plus design)"(Reg. No. 5764327), "EMERSON HUMAN CAPITAL CONSULTING" (Reg. No. 4888428), "EMERSON HUMAN CAPITAL CONSULTING" (plus design)(Reg. No. 4888429) and Applicant's mark, "EMERSON" in U.S. Pending Application Serial No. 88/782,514, Applicant asserts that it has used the EMERSON mark for the services listed in its pending application since as early as June 6, 1996. Applicant believes that this date establishes priority over the cited registrations (which have claimed first use dates of June 2012, October 31, 2017, January 2004, and January 2004, respectively). Applicant is therefore the senior user of this mark. Applicant respectfully requests the Examiner remove this potential refusal, on the basis of Applicant being the senior user of the mark. | |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s) | The mark 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). 3,297,537 |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Kerry L. Timbers |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@sunsteinlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 4557/2039 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Kerry L. Timbers |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@sunsteinlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 4557/2039 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Meredith Ainbinder/ |
| SIGNATORY'S NAME | Meredith Ainbinder |
| SIGNATORY'S POSITION | Assistant Vice President & Deputy General Counsel |
| DATE SIGNED | 09/08/2020 |
| RESPONSE SIGNATURE | /Kerry L. Timbers/ |
| SIGNATORY'S NAME | Kerry L. Timbers |
| SIGNATORY'S POSITION | Attorney of record, MA bar member |
| SIGNATORY'S PHONE NUMBER | 6174439292 |
| DATE SIGNED | 09/08/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 08 10:28:19 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XX-202 00908102819421873-8878251 4-750ecaf6e6e40dbf853884e 2f5c2bf6f4c47d5f71c293422 febbacadaae5154a-N/A-N/A- 20200908101652270109 |
| 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) |
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.