PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
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`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
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`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86470367
`
`LAW OFFICE 117
`
`http://tsdr.uspto.gov/img/86470367/large
`
`MHS ASSESSMENTS
`
`NO
`
`NO
`
`This preliminary response adds the convention priority for this application.(cid:160) A supplemental response will be filed at a later date to address the
`requirements of the March 19, 2015 Office Action.
`
`GOODS AND/OR SERVICES SECTION (016)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`016
`
`A psychological assessment tool, namely, automated and printed item booklets, questionnaires, interview forms, workbooks, scoring forms,
`answer keys, profile sheets, report forms and manuals, all used to detect behavioral disorders and automatically generate interpretation reports
`and treatment measures using computer software and web-based technology
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (016)(proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`016
`
`A psychological assessment tool, namely, automated and printed item booklets, questionnaires, interview forms, workbooks, scoring forms,
`answer keys, profile sheets, report forms and manuals, all used to detect behavioral disorders and automatically generate interpretation reports
`and treatment measures using computer software and web-based technology
`
`FILING BASIS
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION NUMBER
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION COUNTRY
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN FILING DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)INTENT TO
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)PERFECT 44(d)
`
`Section 1(b)
`
`Section 44(d)
`
`1700894
`
`Canada
`
`11/03/2014
`
`At this time, the applicant intends to rely on Section 44(e) as a basis for registration.
`If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a
`valid claim of priority may be retained.
`
`GOODS AND/OR SERVICES SECTION (044)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`044
`
`

`

`Psychological testing, consultation, and training workshops by means of web-based technology, computer software and printed booklets,
`questionnaires, interview forms, workbooks, scoring forms, answer keys, profile sheets, report forms and manuals
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (044)(proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`044
`
`Psychological testing, consultation, and training workshops by means of web-based technology, computer software and printed booklets,
`questionnaires, interview forms, workbooks, scoring forms, answer keys, profile sheets, report forms and manuals
`
`FILING BASIS
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION NUMBER
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION COUNTRY
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN FILING DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)INTENT TO
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)PERFECT 44(d)
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Section 1(b)
`
`Section 44(d)
`
`1700894
`
`Canada
`
`11/03/2014
`
`At this time, the applicant intends to rely on Section 44(e) as a basis for registration.
`If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a
`valid claim of priority may be retained.
`
`/Bruce W. McKee/
`
`Bruce W. McKee
`
`Attorney of Record, Iowa bar member
`
`515-288-3667
`
`04/28/2015
`
`/Bruce W. McKee/
`
`Bruce W. McKee
`
`Attorney of Record, Iowa bar member
`
`515-288-3667
`
`04/28/2015
`
`YES
`
`Tue Apr 28 17:50:31 EDT 2015
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0150428175031214165-86470
`367-530a795646ddbff493e18
`da55d096827a8f7f2a341aab6
`56ab4438e2a21a444b-N/A-N/
`A-20150428174930032487
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`

`

`To the Commissioner for Trademarks:
`
`Application serial no. 86470367(cid:160)MHS ASSESSMENTS (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86470367/large) has been
`amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`This preliminary response adds the convention priority for this application.(cid:160) A supplemental response will be filed at a later date to address the
`requirements of the March 19, 2015 Office Action.
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 016 for A psychological assessment tool, namely, automated and printed item booklets, questionnaires, interview forms,
`workbooks, scoring forms, answer keys, profile sheets, report forms and manuals, all used to detect behavioral disorders and automatically
`generate interpretation reports and treatment measures using computer software and web-based technology
`Original Filing Basis:
`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: Class 016 for A psychological assessment tool, namely, automated and printed item booklets, questionnaires, interview forms,
`workbooks, scoring forms, answer keys, profile sheets, report forms and manuals, all used to detect behavioral disorders and automatically
`generate interpretation reports and treatment measures using computer software and web-based technology
`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.
`
`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 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 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 1700894 filed 11/03/2014]. 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. If ultimately the applicant
`does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 044 for Psychological testing, consultation, and training workshops by means of web-based technology, computer software and
`printed booklets, questionnaires, interview forms, workbooks, scoring forms, answer keys, profile sheets, report forms and manuals
`Original Filing Basis:
`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: Class 044 for Psychological testing, consultation, and training workshops by means of web-based technology, computer software and
`printed booklets, questionnaires, interview forms, workbooks, scoring forms, answer keys, profile sheets, report forms and manuals
`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.
`
`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 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 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 1700894 filed 11/03/2014]. 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. If ultimately the applicant
`does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.
`
`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. Section 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 amendment to allege use (AAU) unsigned, all
`statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application
`or AAU and this submission made on information and belief are believed to be true.
`
`STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section
`1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service
`mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the
`mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and
`such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the
`mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU;
`and to the best of the signatory's knowledge and belief, no other person has 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 of such other person, to cause confusion or
`mistake, or to deceive.
`
`STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
`Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in
`commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the
`applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of
`the signatory's knowledge and belief, no other person has 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 of such other person, to cause confusion or mistake, or to
`deceive.
`
`Signature: /Bruce W. McKee/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 04/28/2015
`
`

`

`Signatory's Name: Bruce W. McKee
`Signatory's Position: Attorney of Record, Iowa bar member
`Signatory's Phone Number: 515-288-3667
`
`Response Signature
`Signature: /Bruce W. McKee/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 04/28/2015
`Signatory's Name: Bruce W. McKee
`Signatory's Position: Attorney of Record, Iowa bar member
`
`Signatory's Phone Number: 515-288-3667
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 86470367
`Internet Transmission Date: Tue Apr 28 17:50:31 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2015042817503121
`4165-86470367-530a795646ddbff493e18da55d
`096827a8f7f2a341aab656ab4438e2a21a444b-N
`/A-N/A-20150428174930032487
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`