Woodward/White, Inc.
Filing Date
To:
Woodward/White, Inc.
Subject: Trademark Office Action Number
77662000
Owners Name:
Woodward/White, Inc.
Owners Address:
129 1st Avenue, SW
Aiken,
SOUTH CAROLINA
UNITED STATES
29801
Trademark ID:
77662000
FIling Date:
2009-02-03
Mark:
BEST LAWYERS
Mark Literal:
BEST LAWYERS
Int Class:
Response Result:
Outgoing Signer
Kathryn E. Coward
Response Signer:
William Y. Klett, III
Services For:
Books and printed publications in the nature of directories in the field of law
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Woodward] White, Inc. § Atty. Docket No.: 31516-14
§
Serial No.: 77/662000 §
Filed: February 3, 2009 § Examiner: Kathryn E. Coward
§
Mark: BEST LAWYERS § Law Office: 115
RESPONSE TO OFFICE ACTION
Dear Madam:
Responsive to the Office Action sent April 21, 2009, Applicant hereby states that
the subject mark has become distinctive of the goods and services as evidenced by
ownership of US. Registration No. 2781013 on the Principal Register for the same
mark for related goods and/or services. Accordingly, the mark should be registered on
the Principal Register under Trademark Act Section 2(f). 15 U.S.C. §1052(f).
INFORMALITIES
In further response, Applicant amends its recitation of goods and services as
follows:
Recognition plaques made of wood and plastic in International Class 20″;
Downloadable electronic publications in the nature of articles and information in
International Class 9″;
Books and printed publications in the nature of directories in the field of law in
International Class 16;
Compilation and systemization of information into computer databases; expert witness
referral services for legal matters International Class 35;
Recognition and incentives by way of awards to demonstrate excellence in the ?eld of
law in International Class 41; and
Online information in the field of law provided online from databases on the Internet in
International Class 45″.
The Examining Attorney has accepted the specimens of record for International
Classes 35 and 41. The original specimen for recognition plaques (originally
designated in Class 6, now amended to Class 20) was rejected. A substitute specimen
showing use in commerce of the mark on the drawing is attached as Exhibit A-1. The
substitute specimen for Class 6 was in use in commerce at least as early as the ?ling
date of the application. A declaration verifying this use as of the date of ?ling of the
application, as well as amended dates of ?rst use, is attached as Exhibit A.
Further, new specimens showing use in commerce of the mark on the drawing
are submitted for Class 9 (Exhibit A-2) and Class 45 (Exhibit A3). The substitute
specimens for Classes 9 and 45 were in use in commerce at least as early as the ?ling
date of the application. The declaration verifying this use as of the date of ?ling of the
application, as well as amended dates of first use, is attached as Exhibit A.
Lastly, Applicant amends its application to assert that Applicant has had a bona
?de intention to use the mark in commerce on or in connection with books and printed
publications in the natu re of dire ctor ies in the ?eld of law in Inte rnat iona l Cla ss 16 sinc e
the filing date of the application. The declaration verifying this intent to use is attached
as Exhibit A.
CLAIM OF OWNERSHIP
Applicant is the owner of US. Registration Nos. 1916381, 1922393, 2781013.
Applicant believes that all issues raised by the examining attorney have been
resolved. Accordingly, Applicant requests that the application be approved and passed
to publication.
Respectfully submitted,
sNVilliam Y. Klett |||
WILLIAM Y. KLETI’, |||
Reg. No. 41,903
Nexsen Pruet, LLC
PO Drawer 2426
Columbia, South Carolina 29202-2426
(803) 253-8205
[email protected]
Dated: October 21, 2009
EXHIBIT A
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Serial No.: 77/662000
Applicant: WoodwardNVhite, Inc.
Filed: April 21, 2009
Mark: BEST LAWYERS
DECLARATION UNDER 37 C.F.R. SECTION 2.20
|, Stephen Geddes, 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
document or any registration resulting there from, declare as follows:
1. the substitute specimen attached hereto as Exhibit A-1 was in use in commerce
at least as early as the filing date of the application in Class 20, and was first used
and first used in commerce as early as December, 2007;
2. the substitute specimen attached hereto as Exhibit A-2 was in use in commerce
at least as early as the filing date of the application in Class 9, and was first used
and first used in commerce as early as December, 2005;
3. the substitute specimen attached hereto as Exhibit A3 was in use in commerce
at least as early as the filing date of the application in Class 45, and was first used
and first used in commerce as early as December, 1999; and
4. WoodwardNVhite, Inc. has had a bona fide intention to use the mark in commerce
on or in connection with books and printed publications in the nature of directories in
the field of law in International Class 16 since the filing date of the application on
April 21, 2009.
All statements made of my own knowledge are true; and all statements made on
information and beliefs are believed to be true.
October 21, 2009 W 4%
Stephen Geddes
Chief Operating Officer
Woodward/White, Inc.
A-1
Best LawyerS
This is [a certify that
John Doe
I’m been wk?ct?l by his peers
to be included in
THE BEST [AWYEBS IN AMERICA
2009
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Woodward] White, Inc. § Atty. Docket No.: 31516-14
§
Serial No.: 77/662000 §
Filed: February 3, 2009 § Examiner: Kathryn E. Coward
§
Mark: BEST LAWYERS § Law Office: 115
RESPONSE TO OFFICE ACTION
Dear Madam:
Responsive to the Office Action sent April 21, 2009, Applicant hereby states that
the subject mark has become distinctive of the goods and services as evidenced by
ownership of US. Registration No. 2781013 on the Principal Register for the same
mark for related goods and/or services. Accordingly, the mark should be registered on
the Principal Register under Trademark Act Section 2(f). 15 U.S.C. §1052(f).
INFORMALITIES
In further response, Applicant amends its recitation of goods and services as
follows:
Recognition plaques made of wood and plastic in International Class 20″;
Downloadable electronic publications in the nature of articles and information in
International Class 9″;
Books and printed publications in the nature of directories in the field of law in
International Class 16;
Compilation and systemization of information into computer databases; expert witness
referral services for legal matters International Class 35;
Recognition and incentives by way of awards to demonstrate excellence in the ?eld of
law in International Class 41; and
Online information in the field of law provided online from databases on the Internet in
International Class 45″.
The Examining Attorney has accepted the specimens of record for International
Classes 35 and 41. The original specimen for recognition plaques (originally
designated in Class 6, now amended to Class 20) was rejected. A substitute specimen
showing use in commerce of the mark on the drawing is attached as Exhibit A-1. The
substitute specimen for Class 6 was in use in commerce at least as early as the ?ling
date of the application. A declaration verifying this use as of the date of ?ling of the
application, as well as amended dates of ?rst use, is attached as Exhibit A.
Further, new specimens showing use in commerce of the mark on the drawing
are submitted for Class 9 (Exhibit A-2) and Class 45 (Exhibit A3). The substitute
specimens for Classes 9 and 45 were in use in commerce at least as early as the ?ling
date of the application. The declaration verifying this use as of the date of ?ling of the
application, as well as amended dates of first use, is attached as Exhibit A.
Lastly, Applicant amends its application to assert that Applicant has had a bona
?de intention to use the mark in commerce on or in connection with books and printed
publications in the natu re of dire ctor ies in the ?eld of law in Inte rnat iona l Cla ss 16 sinc e
the filing date of the application. The declaration verifying this intent to use is attached
as Exhibit A.
CLAIM OF OWNERSHIP
Applicant is the owner of US. Registration Nos. 1916381, 1922393, 2781013.
Applicant believes that all issues raised by the examining attorney have been
resolved. Accordingly, Applicant requests that the application be approved and passed
to publication.
Respectfully submitted,
sNVilliam Y. Klett |||
WILLIAM Y. KLETI’, |||
Reg. No. 41,903
Nexsen Pruet, LLC
PO Drawer 2426
Columbia, South Carolina 29202-2426
(803) 253-8205
[email protected]
Dated: October 21, 2009
EXHIBIT A
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Serial No.: 77/662000
Applicant: WoodwardNVhite, Inc.
Filed: April 21, 2009
Mark: BEST LAWYERS
DECLARATION UNDER 37 C.F.R. SECTION 2.20
|, Stephen Geddes, 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
document or any registration resulting there from, declare as follows:
1. the substitute specimen attached hereto as Exhibit A-1 was in use in commerce
at least as early as the filing date of the application in Class 20, and was first used
and first used in commerce as early as December, 2007;
2. the substitute specimen attached hereto as Exhibit A-2 was in use in commerce
at least as early as the filing date of the application in Class 9, and was first used
and first used in commerce as early as December, 2005;
3. the substitute specimen attached hereto as Exhibit A3 was in use in commerce
at least as early as the filing date of the application in Class 45, and was first used
and first used in commerce as early as December, 1999; and
4. WoodwardNVhite, Inc. has had a bona fide intention to use the mark in commerce
on or in connection with books and printed publications in the nature of directories in
the field of law in International Class 16 since the filing date of the application on
April 21, 2009.
All statements made of my own knowledge are true; and all statements made on
information and beliefs are believed to be true.
October 21, 2009 W 4%
Stephen Geddes
Chief Operating Officer
Woodward/White, Inc.
A-1
Best LawyerS
This is [a certify that
John Doe
I’m been wk?ct?l by his peers
to be included in
THE BEST [AWYEBS IN AMERICA
2009
Best Lawyers – Article Search Page 1 of 3
| Deutsch | Bpa?ol | Frangais | English Login
A thorough, reiiabie and valuable resource for
ali who seek the best in our profession.
Best: Lawyers ierome I. Shestack
Past President, .rirneritan Bar Ass-scraton 1997-1998
Home Lawyer Search a Search m Legal Uodaies . Article Search
About Us
Search Best Lawyers Article Database
Advisory Board
Please select from the search criteria. Due to the size of the database, when searching within Article Text, please
Search allow enough time for the results to be displayed.
Methodology
Client Comments
Country United States Firm
Subscribers
State/Province District of Columbia o*x’3- Lawyer Name
:
News
Specialty Intellectual Propertywtaw g Topic
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Article Text
1 Downloads
Guidelines
Lawyers of Search Results Resuits: 24
the Year
FAQ Robert D. Bajefsky Generic Drugs and Abuse of the Hatch~
Finnegan, Henderson, Farabow, Garrett & Waxman Law
Experts Article
Dunner LLP
Services 901 New York Avenue, NW
Washington, DC 20001-4413
Contact Us 202-408-4000
w. Raymond Felton COUNSELING START-UP HIGH TECHNOLOGY
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Article
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Laurence R. He?er U.S. Trademark Dilution Act Likel
Finnegan, Henderson, Farabow, Garrett & Reinvigorated
Dunner LLP
901 New York Avenue, NW
Washington, DC 20001-4413
202-408-4000
Thomas Irving Conducting ‘Ihorou?qh and Efficient IP Due
Finnegan, Henderson, Farabow, Garrett & Dili en a Investi ation ‘ in or crate
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Washington, DC 20001-4413
202-4084000
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Finnegan, Henderson, Farabow, Garrett &
Dunner LLP
‘ Article ”
901 New York Avenue, NW
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202-408-4000
Thomas Irving Unique Aspects of US. Patent Protection
Finnegan, Henderson, Farabow, Garrett &
Anicle
Dunner LLP
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202-4084000
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Finnegan, Henderson, Farabow, Garrett &
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James W. Jennings, Jr. Protection of intellectual Property in a Joint
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E. Scott Johnson [P Audit Can Reveal Hidden Assets;
Ober, Kaler, Grimes 81 Shriver
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Baltimore, MD 21202-1643
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Ober, Kaler, Grimes & Shriver Need)
120 East Baltimore Street, Suite 800 Article ” ”
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Finnegan, Henderson, Farabow, Garrett & Patents in Jeogardy
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571-2032700
Charles E. Lipsey Litigation 9f the Written Descrigtion
Finnegan, Henderson, Farabow, Garrett & Requirement
Dunner LLP Article
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Ronald E. Myrick Patent and Technology Licensing Differ in
Finnegan, Henderson, Farabow, Garrett & Value
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Finnegan, Henderson, Farabow, Garrett &
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650849-6600
Joseph M. Potenza Comments on KSR Intl Co. v. Teleflex, Inc.
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E. Robert Yoches Recent Deveio )ments of Ccrnmerce
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E. Robert Yoches US. Patent Litigation: A Primer far Indian
Finnegan, Henderson, Farabow, Garrett & Comganies
Dunner LLP Article
901 New York Avenue, NW
Washington, DC 20001-4413
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Finnegan, Henderson, Farabow, Garrett &
Dunner LLP Article
901 New York Avenue, NW
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Results: 24
The articles posted on this; site remain the exclusive property at the authi)rs3/ WWW. H . V ., _
Lawyers of
the Year
FAQ
Experts
Services
Contact Us
Home | About Us I Search | Subscribers | News | Bookstore | Downloads | Contact Us | Terms&Conditions&Prlvacy Policy
Copyright © 2008 Best Lawyers. All rights reserved.
http://www.best1awyers.com/search/default.aspx 10/21/2009