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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 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: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

In International Class 041, the mark was first used at least as early as 01/25/2022 and first used in commerce at least as early as 01/25/2022.


Proposed:
Class 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

Deleted Filing Basis: 1(b)
In International Class 041, the mark was first used at least as early as 01/25/2022 . and first used in commerce at least as early as 01/25/2022 .

Applicant hereby submits one(or more) specimen(s) for Class 041. The specimen(s) submitted consists of Screenshot of Applicant webpage (which is accessible behind log-in page) displaying the mark used in direct association with the advertising of the 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:
SPU0-6386185130-202203221 15401708796_._Specimen_OA.pdf
Converted PDF file(s) ( 3 pages) Specimen File1Specimen File2Specimen File3


Webpage URL: https//my.dimensional.com/collections/4s-framework
Webpage Date of Access: 01/27/2022
Webpage URL: https//my.dimensional.com/collections/4s-framework
Webpage Date of Access: 03/18/2022

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant is submitting the same specimen providing annotations highlighting URL and the dates.

Correspondence Information (current):
      Michael J. Turgeon
      PRIMARY EMAIL FOR CORRESPONDENCE: mturgeon@vedderprice.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ablekhman@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; 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)
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: /Michael J. Turgeon/      Date: 03/22/2022
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

Response Signature
Signature: /Michael J. Turgeon/     Date: 03/22/2022
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: Tue Mar 22 13:34:06 ET 2022
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2022032213340690
4948-90281767-8006338da5f565bc92f512afb9
b237ef7e836d68c85e8cee39f575598621964-N/
A-N/A-20220322133037476134