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. 90089504 QUEST(Standard Characters, see http://uspto.report/TM/90089504/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: In response to the Examiner's inquiry, Applicant is amending its services herewith to reflect the fact that it is an "outsourcing service provider" as the USPTO now defines that term. For the Examiner's reference, the language in the original Application was used in Applicant's existing registrations prior to the change in the manner that the USPTO defined and categorized "outsourcing services" vs. "outsourcing service providers". Applicant's substitute specimens submitted herewith are evidence that show that Applicant is an outsourcing service provider. More specifically, "Quest is a third-party outsourcing quality assurance company engaged or contracted by the mortgage company, bank, saving and loan or credit union to conduct quality assurance services . . .available Quest services provide quality control and state/federal regulatory compliance outsourcing programs with timely turnaround and reporting, servicing audits and branch audits, operational reviews and improvement programs, policy development, due diligence programs, and advisory consulting in various areas." Accordingly, as Applicant has now clarified its identification of services to reflect the nature of its services, Applicant respectfully requests the Application be passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for DUE DILIGENCE SERVICES PROVIDED TO BUSINESSES FOR THE PURPOSE OF LOAN PORTFOLIO EVALUATION AND REVIEW; OUTSOURCING SERVICES IN THE FIELD OF QUALITY CONTROL, DUE DILIGENCE, POLICY DEVELOPMENT, EMPLOYEE TRAINING, LOAN PROCESSING AND ADMINISTRATION ALL PROVIDED TO THE FINANCIAL SERVICE INDUSTRY

Applicant proposes to amend the following:

Current:
Class 036 for MORTGAGE BANKING CONSULTING SERVICES
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998 , and is now in use in such commerce.


Proposed:

Tracked Text Description: MORTGAGE BANKING CONSULTING SERVICES; DUE DILIGENCE SERVICES PROVIDED TO BUSINESSES, NAMELY, FINANCIAL DUE DILIGENCE SERVICES RELATING TO THE EVALUATION OF REAL ESTATE TRANSACTIONS AND MORTGAGE LOAN DOCUMENTATION FOR THE PURPOSE OF LOAN PORTFOLIO EVALUATION AND REVIEW; OUTSOURCING SERVICE PROVIDER IN THE FIELD OF FINANCIAL DUE DILIGENCE AND LOAN PROCESSING AND ADMINISTRATION PROVIDED TO THE FINANCIAL SERVICE INDUSTRYClass 036 for MORTGAGE BANKING CONSULTING SERVICES; DUE DILIGENCE SERVICES PROVIDED TO BUSINESSES, NAMELY, FINANCIAL DUE DILIGENCE SERVICES RELATING TO THE EVALUATION OF REAL ESTATE TRANSACTIONS AND MORTGAGE LOAN DOCUMENTATION FOR THE PURPOSE OF LOAN PORTFOLIO EVALUATION AND REVIEW; OUTSOURCING SERVICE PROVIDER IN THE FIELD OF FINANCIAL DUE DILIGENCE AND LOAN PROCESSING AND ADMINISTRATION PROVIDED TO THE FINANCIAL SERVICE INDUSTRY
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 036. The specimen(s) submitted consists of Webpages showing the applied for services..
"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].
Original PDF file:
SPU1-3898140130-202104130 91423638861_._Class_36_Sp ecimen.pdf
Converted PDF file(s) ( 12 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12


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

Applicant proposes to amend the following:

Current:
Class 042 for COMPLIANCE AUDITING SERVICE, namely, ASSURING COMPLIANCE WITH STATE AND FEDERAL REGULATIONS IN THE FINANCIAL SERVICE INDUSTRY
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998 , and is now in use in such commerce.


Proposed:

Tracked Text Description: COMPLIANCE AUDITING SERVICE, namely, ASSURING COMPLIANCE WITH STATE AND FEDERAL REGULATIONS IN THE FINANCIAL SERVICE INDUSTRY; OUTSOURCING SERVICE PROVIDER IN THE FIELD OF QUALITY CONTROL PROVIDED TO THE FINANCIAL SERVICE INDUSTRYClass 042 for OUTSOURCING SERVICE PROVIDER IN THE FIELD OF QUALITY CONTROL PROVIDED TO THE FINANCIAL SERVICE INDUSTRY
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of Webpages showing the applied for services..
"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].
Original PDF file:
SPU2-3898140130-202104130 91423638861_._Class_42_Sp ecimen.pdf
Converted PDF file(s) ( 12 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12


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 OUTSOURCING SERVICE PROVIDER IN THE FIELD OF EMPLOYMENT TRAINING PROVIDED TO THE FINANCIAL SERVICE INDUSTRY
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041 . The specimen(s) submitted consists of Webpages showing the applied for services. .
"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].
Original PDF file:
SPN0-3898140130-202104130 91423638861_._Class_41_Sp ecimen.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


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

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for REGULATORY COMPLIANCE AUDITING SERVICES, NAMELY, ASSURING COMPLIANCE WITH STATE AND FEDERAL REGULATIONS IN THE FINANCIAL SERVICE INDUSTRY; OUTSOURCING SERVICE PROVIDER IN THE FIELD OF INTERNAL LEGAL POLICY DEVELOPMENT PROVIDED TO THE FINANCIAL SERVICE INDUSTRY
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/1998 and first used in commerce at least as early as 00/00/1998 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of Webpages showing the applied for services. .
"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].
Original PDF file:
SPN1-3898140130-202104130 91423638861_._Class_45_Sp ecimen.pdf
Converted PDF file(s) ( 3 pages) Specimen File1Specimen File2Specimen File3


Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      MARK J. LISS
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@leydig.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jquetsch@leydig.com

The docket/reference number is 750415.
Correspondence Information (proposed):
      Mark J. Liss
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@leydig.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jquetsch@leydig.com; jcarrafiello@leydig.com; mliss@leydig.com

The docket/reference number is 750415.

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: /Mark J. Liss/      Date: 04/15/2021
Signatory's Name: Mark J. Liss
Signatory's Position: Attorney of Record, Illinois Bar member in good standing
Signature method: Signed directly within the form

Response Signature
Signature: /Mark J. Liss/     Date: 04/15/2021
Signatory's Name: Mark J. Liss
Signatory's Position: Attorney of Record, Illinois bar member in good standing
Signature method: Signed directly within the form

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:    MARK J. LISS
   LEYDIG, VOIT & MAYER, LTD.
   SUITE 4900
   TWO PRUDENTIAL PLAZA, 180 N. STETSON AVE
   CHICAGO, Illinois 60601
Mailing Address:    Mark J. Liss
   LEYDIG, VOIT & MAYER, LTD.
   SUITE 4900
   TWO PRUDENTIAL PLAZA, 180 N. STETSON AVE
   CHICAGO, Illinois 60601
        
PAYMENT: 90089504
PAYMENT DATE: 04/15/2021
        
Serial Number: 90089504
Internet Transmission Date: Thu Apr 15 16:02:38 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2021041516023846
6633-90089504-770fe2a9f3329285d7aa49a2d8
7ed23eb3fbf9057959976d4634cb6fb797996b-D
A-02361608-20210415155638146200