Response to Office Action

PTO- 1957

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- 1957

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 Office Action

To the Commissioner for Trademarks:

Application serial no. 88894807 CHAPTER(Standard Characters, see http://uspto.report/TM/88894807/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Advising on retirement, transition to retirement, finance, financial planning, legacy planning, health insurance, Medicare, travel, lifestyle, part-time work and volunteer opportunities, and discounts; a platform, a website, and phone-based resource with information and functionality regarding these topics; online newsletters concerning these topics; insurance brokerage services for all types of insurance, Medicare Advantage plans, Supplemental Medicare plans (Medigap), Part D Prescription drug plans; providing-affiliate based discounts, card-linked offers, deals from partners, and guidance in finding part-time work and volunteer opportunities in retirement
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: Advising on retirement, transition to retirement, finance, financial planning, legacy planning, health insurance, Medicare, travel, lifestyle, part-time work and volunteer opportunities, and discounts; (Based on Use) Advising on finance during retirement, insurance brokerage services; a platform, a website, and phone-based resource with information and functionality regarding these topics; providing information about, eligibility for, and selection of Medicare plans and health insurance plans; online newsletters concerning these topics; providing a website featuring information in the fields of finance, health insurance, and Medicare; insurance brokerage services for all types of insurance, Medicare Advantage plans, Supplemental Medicare plans (Medigap), Part D Prescription drug plans; (Based on Intent to Use) Medicare claims advice and support rendered to individuals; providing-affiliate based discounts, card-linked offers, deals from partners, and guidance in finding part-time work and volunteer opportunities in retirement; Health insurance claims advice and support for healthcare insurance purchasers and Medicare beneficiaries; providing a website featuring information in the fields of financial planning, legacy planning, financial aspects of retirement and on transition to retirementClass 036 for (Based on Use) Advising on finance during retirement, insurance brokerage services; providing information about, eligibility for, and selection of Medicare plans and health insurance plans; providing a website featuring information in the fields of finance, health insurance, and Medicare; (Based on Intent to Use) Medicare claims advice and support rendered to individuals; Health insurance claims advice and support for healthcare insurance purchasers and Medicare beneficiaries; providing a website featuring information in the fields of financial planning, legacy planning, financial aspects of retirement and on transition to retirement
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.

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


Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Administration of a discount program enabling participants to obtain discounts on goods and services; providing a website featuring information in the field of part-time work and volunteer opportunities, and information on discount programs
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.

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


Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Providing online newsletters in the fields of advice on retirement, transition to retirement, finance, financial planning, legacy planning, health insurance, Medicare, lifestyle, part-time work and volunteer opportunities, and discounts; providing a website featuring information in the field of lifestyle in the nature of leisure activities
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.

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


ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant is simultaneously submitting an Amendment to Allege Use and Request to Divide the subject application. The intended application coverage is shown in the attached document.

Original PDF file:
mis-1-3810821634-20210212 093511881869_._CHAPTER_-_ Final_ID__F3902398x96B9E_.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Correspondence Information (current):
      TAMAR NIV BESSINGER
      PRIMARY EMAIL FOR CORRESPONDENCE: Bessinger-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is MEIR 2005025.
Correspondence Information (proposed):
      Tamar Niv Bessinger
      PRIMARY EMAIL FOR CORRESPONDENCE: Bessinger-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is MEIR 2005025.

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).

FEE(S)
Fee(s) in the amount of $700 is being submitted.

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: /tnb/      Date: 02/12/2021
Signatory's Name: Tamar Niv Bessinger
Signatory's Position: Attorney of Record, New York State Bar Member
Signatory's Phone Number: 212-813-5900

Signature method: Sent to third party for signature

Response Signature
Signature: /tnb/     Date: 02/12/2021
Signatory's Name: Tamar Niv Bessinger
Signatory's Position: Attorney of Record, New York Bar Member
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:    TAMAR NIV BESSINGER
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Tamar Niv Bessinger
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
        
PAYMENT: 88894807
PAYMENT DATE: 02/12/2021
        
Serial Number: 88894807
Internet Transmission Date: Fri Feb 12 12:33:27 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021021212332723
3993-88894807-76022fdfeda5c884fbb6c1998d
d9812b24a2e06447251a2a6ea86437d0b5e866-D
A-33253365-20210212093511881869