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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88582519 |
LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
MARK SECTION |
MARK |
http://tmng-al.gov.uspto.report/resting2/api/img/88582519/large |
LITERAL ELEMENT |
FELLOW |
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. |
OWNER SECTION (current) |
NAME |
Fellow Insights Inc. |
STREET |
111 Albert Street, 3rd Floor |
CITY |
Ottawa, Ontario |
ZIP/POSTAL CODE |
K1P1A5 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
OWNER SECTION (proposed) |
NAME |
Fellow Insights Inc. |
STREET |
111 Albert Street, 3rd Floor |
CITY |
Ottawa, Ontario |
ZIP/POSTAL CODE |
K1P1A5 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
EMAIL |
XXXX |
ARGUMENT(S) |
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 SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_1989722457-20200423193742285543_._fellowconsent1.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\889\777\88977772\LM2Copy\88582519\1\ROA7\ROA2.JPG |
ORIGINAL PDF FILE |
evi_1989722457-20200423193742285543_._fellowconsent2.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\889\777\88977772\LM2Copy\88582519\1\ROA7\ROA3.JPG |
DESCRIPTION OF EVIDENCE FILE |
letter of consent |
GOODS AND/OR SERVICES SECTION (009) (no change) |
GOODS AND/OR SERVICES SECTION (035) (current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Business management consulting services, namely, providing human resources software consulting and implementation services |
FILING BASIS |
Section 1(a) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1980731 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
08/15/2019 |
GOODS AND/OR SERVICES SECTION (035) (proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Business management consulting services, namely, providing human resources software consulting and
implementation services; Business management consulting services, namely, human resources consultation |
FINAL DESCRIPTION |
Business management consulting services, namely, human resources consultation |
FILING BASIS |
Section 1(a) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1980731 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Canada |
FOREIGN FILING DATE |
08/15/2019 |
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. |
GOODS AND/OR SERVICES SECTION (042) (no change) |
CORRESPONDENCE INFORMATION (current) |
NAME |
JAN TAMULEWICZ |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
jan.tamulewicz@kattenlaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
393102/00002 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Jan Tamulewicz |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
jan.tamulewicz@kattenlaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
jan.tamulewicz@katten.com |
DOCKET/REFERENCE NUMBER |
393102/00002 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Jan Tamulewicz/ |
SIGNATORY'S NAME |
Jan Tamulewicz |
SIGNATORY'S POSITION |
Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER |
212-940-8673 |
DATE SIGNED |
04/23/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Apr 23 19:47:26 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XX-2
0200423194726767201-88582
519-710ad7af5d53b8e674b12
db684edaee2b23c81a2398996
b84662eea6c8af183010-N/A-
N/A-20200423193742285543 |
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