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. 88582519 FELLOW(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88582519/large) has been amended as follows:

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

The office action states that a mark in a prior-filed pending application no. 88488697 may present a bar to registration of applicant’s mark.

Applicant respectfully submits a letter of consent from the owner of application no. 88488697 to obviate a possible 2(d) rejection.

EVIDENCE
Evidence in the nature of letter of consent has been attached.
Original PDF file:
evi_1989722457-20200423193742285543_._fellowconsent1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_1989722457-20200423193742285543_._fellowconsent2.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for Business management consulting services, namely, providing human resources software consulting and implementation services
The applicant, 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, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1980731 filed 08/15/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Business management consulting services, namely, providing human resources software consulting and implementation services; Business management consulting services, namely, human resources consultationClass 035 for Business management consulting services, namely, human resources consultation
The applicant, 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, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1980731 filed 08/15/2019]. 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Fellow Insights Inc., a corporation of Canada, having an address of
      111 Albert Street, 3rd Floor
      Ottawa, Ontario, K1P1A5
      Canada

Proposed: Fellow Insights Inc., a corporation of Canada, having an address of
      111 Albert Street, 3rd Floor
      Ottawa, Ontario, K1P1A5
      Canada
      Email Address: XXXX
Correspondence Information (current):
      JAN TAMULEWICZ
      PRIMARY EMAIL FOR CORRESPONDENCE: jan.tamulewicz@kattenlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 393102/00002.
Correspondence Information (proposed):
      Jan Tamulewicz
      PRIMARY EMAIL FOR CORRESPONDENCE: jan.tamulewicz@kattenlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jan.tamulewicz@katten.com

The docket/reference number is 393102/00002.

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)
Response Signature
Signature: /Jan Tamulewicz/     Date: 04/23/2020
Signatory's Name: Jan Tamulewicz
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-940-8673

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:    JAN TAMULEWICZ
   KATTEN MUCHIN ROSENMAN LLP
   
   575 MADISON AVENUE
   NEW YORK, New York 10022-2585
Mailing Address:    Jan Tamulewicz
   KATTEN MUCHIN ROSENMAN LLP
   575 MADISON AVENUE
   NEW YORK, New York 10022-2585
        
Serial Number: 88582519
Internet Transmission Date: Thu Apr 23 19:47:26 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020042319472676
7201-88582519-710ad7af5d53b8e674b12db684
edaee2b23c81a2398996b84662eea6c8af183010
-N/A-N/A-20200423193742285543