Response to Office Action

DIMENSIONAL 4S FRAMEWORK

Dimensional Fund Advisors LP

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

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 90281767
LAW OFFICE ASSIGNED LAW OFFICE 108
MARK SECTION
MARK mark
LITERAL ELEMENT DIMENSIONAL 4S FRAMEWORK
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)
Applicant notes that the 6 month response deadline for US App. Ser. No. 90014887 was March 29, 2021 and that the TESS records show that no response was timely filed. Accordingly, Applicant believes that the cited application is abandoned for failure to timely respond to the Office Action. Consequently, Applicant reserves its right to respond to a substantive refusal to register based thereon.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 041
DESCRIPTION
Education services in the nature of courses for investment advisors; training services in the field of investment advisor communications
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 041
TRACKED TEXT DESCRIPTION
Education services in the nature of courses for investment advisors; Education services in the nature of courses in the field of professional and client communications for investment advisors; training services in the field of investment advisor communications; training course services in the field of professional and client communications for investment advisors
FINAL DESCRIPTION
Education services in the nature of courses in the field of professional and client communications for investment advisors; training course services in the field of professional and client communications for investment advisors
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
FILING BASIS Section 1(b)
ADDITIONAL STATEMENTS SECTION
DISCLAIMER No claim is made to the exclusive right to use "FRAMEWORK" apart from the mark as shown.
CORRESPONDENCE INFORMATION (current)
NAME MICHAEL J. TURGEON
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE mturgeon@vedderprice.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) ablekhman@vedderprice.com; erodriguez@vedderprice.com; ipdocket@vedderprice.com
DOCKET/REFERENCE NUMBER 04229007061
CORRESPONDENCE INFORMATION (proposed)
NAME Michael J. Turgeon
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE mturgeon@vedderprice.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) ablekhman@vedderprice.com; erodriguez@vedderprice.com; ipdocket@vedderprice.com
DOCKET/REFERENCE NUMBER 04229007061
SIGNATURE SECTION
RESPONSE SIGNATURE /Michael J. Turgeon/
SIGNATORY'S NAME Michael J. Turgeon
SIGNATORY'S POSITION Attorney of Record, Illinois Bar member
SIGNATORY'S PHONE NUMBER 312-609-7716
DATE SIGNED 04/12/2021
ROLE OF AUTHORIZED SIGNATORY Authorized U.S.-Licensed Attorney
SIGNATURE METHOD Signed directly within the form
FILING INFORMATION SECTION
SUBMIT DATE Mon Apr 12 14:54:29 ET 2021
TEAS STAMP USPTO/ROA-XX.XX.XXX.XX-20
210412145429302566-902817
67-7704599247ecf66e12bba5
d809b0a1bcc333abfce1abf65
2cd38de5e8526c4994-N/A-N/
A-20210412145242946104



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. 90281767 DIMENSIONAL 4S FRAMEWORK(Standard Characters, see http://uspto.report/TM/90281767/mark.png) has been amended as follows:

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

Applicant notes that the 6 month response deadline for US App. Ser. No. 90014887 was March 29, 2021 and that the TESS records show that no response was timely filed. Accordingly, Applicant believes that the cited application is abandoned for failure to timely respond to the Office Action. Consequently, Applicant reserves its right to respond to a substantive refusal to register based thereon.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for Education services in the nature of courses for investment advisors; training services in the field of investment advisor communications
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: Education services in the nature of courses for investment advisors; Education services in the nature of courses in the field of professional and client communications for investment advisors; training services in the field of investment advisor communications; training course services in the field of professional and client communications for investment advisorsClass 041 for Education services in the nature of courses in the field of professional and client communications for investment advisors; training course services in the field of professional and client communications for investment advisors
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
Disclaimer
No claim is made to the exclusive right to use "FRAMEWORK" apart from the mark as shown.

Correspondence Information (current):
      MICHAEL J. TURGEON
      PRIMARY EMAIL FOR CORRESPONDENCE: mturgeon@vedderprice.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ablekhman@vedderprice.com; erodriguez@vedderprice.com; ipdocket@vedderprice.com

The docket/reference number is 04229007061.
Correspondence Information (proposed):
      Michael J. Turgeon
      PRIMARY EMAIL FOR CORRESPONDENCE: mturgeon@vedderprice.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ablekhman@vedderprice.com; erodriguez@vedderprice.com; ipdocket@vedderprice.com

The docket/reference number is 04229007061.

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: /Michael J. Turgeon/     Date: 04/12/2021
Signatory's Name: Michael J. Turgeon
Signatory's Position: Attorney of Record, Illinois Bar member

Signatory's Phone Number: 312-609-7716 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:    MICHAEL J. TURGEON
   VEDDER PRICE P.C.
   SUITE 2500
   222 NORTH LASALLE STREET
   CHICAGO, Illinois 60601
Mailing Address:    Michael J. Turgeon
   VEDDER PRICE P.C.
   SUITE 2500
   222 NORTH LASALLE STREET
   CHICAGO, Illinois 60601
        
Serial Number: 90281767
Internet Transmission Date: Mon Apr 12 14:54:29 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20210412145429302
566-90281767-7704599247ecf66e12bba5d809b
0a1bcc333abfce1abf652cd38de5e8526c4994-N
/A-N/A-20210412145242946104



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