HANSCOMB CONSULTING - Trademark Details
Status: 604 - Abandoned - After Inter-Partes Decision
Image for trademark with serial number 87100385
Serial Number
87100385
Word Mark
HANSCOMB CONSULTING
Status
604 - Abandoned - After Inter-Partes Decision
Status Date
2020-11-03
Filing Date
2016-07-12
Mark Drawing
3000 - Illustration: Drawing or design which also includes word(s)/ letter(s)/number(s) Typeset
Design Searches
260728, 260914 - Miscellaneous designs with overall diamond shape, including letters forming or comprising a diamond. Three or more squares.
Published for Opposition Date
2016-12-27
Attorney Name
Law Office Assigned Location Code
M30
Employee Name
TAYLOR, DAVID T
Statements
Indication of Colors claimed
The color(s) blue and white is/are claimed as a feature of the mark.
Concurrent Use Statement
Concurrent use information. (i) Applicant concedes that its use of the mark "HANSCOMB CONSULTING and Design" is not exclusive because, as explained below, Hanscomb Limited may have established common law rights in certain limited geographical territories for its use of the service mark "HANSCOMB" in association with services similar to those of Applicant. Hanscomb Limited filed application Serial No. 86/644,350 on May 28, 2015, after Applicant's first use of its mark in interstate commerce, seeking registration of the mark "HANSCOMB" for services similar to those of Applicant. Hanscomb Limited failed to recognize Applicant's superior rights in their application. Applicant will request that the TTAB institute a concurrent use proceeding in which the respective use territories of Applicant and Hanscomb Limited are adjudicated. (ii) Applicant is requesting registration of its mark for the services as set forth in this application throughout the United States of America with the exception of the following geographical areas: 1) Within zip code 60521 in Hinsdale, IL; and 2) Within zip code 90071 in Los Angeles, CA. (iii) Applicant identifies the following concurrent user of the mark "HANSCOMB" in the geographical areas identified in paragraph (ii) above as follows: Hanscomb Limited, 900-40 Holly Street, Toronto, Ontario, M4S 3C3, CANADA. (iv) To the best of Applicant's knowledge and belief, Hanscomb Limited has engaged in limited use of the mark "HANSCOMB" in the United States in the geographical areas identified in paragraph (ii) above with no plans or steps taken to expand use of the mark beyond these locations. Applicant is aware that Hanscomb Limited has sporadically used the mark "HANSCOMB" in other geographical locations in the United States but believes those sporadic uses are insufficient to establish any exclusive rights in those locations or further exceptions to Applicant's otherwise exclusive U.S. rights. Based upon Hanscomb Limited's limited use of the "HANSCOMB" mark as described above, Applicant submits that Hanscomb Limited may have acquired certain common law rights to the "HANSCOMB" mark limited to the geographical areas identified in paragraph (ii) above but has no rights to the mark "HANSCOMB" beyond those limited geographical areas. Hanscomb Limited's above-identified application claims use since January 1, 2000 for business consultation services similar to those claimed by Applicant. However, as stated in this application, Applicant has used its mark in interstate commerce in association with all of its services since at least as early as July 11, 2013, which is prior to the date of filing of Hanscomb Limited's application. (v) Applicant submits that were the Trademark Trial and Appeal Board (TTAB) to grant Applicant a registration on its application including the geographical restriction set forth in paragraph (ii) above, there would be no likelihood of confusion between Applicant's use of the mark "HANSCOMB CONSULTING and Design" and Hanscomb Limited's use of the mark "HANSCOMB" within its geographically limited territory.
Disclaimer with Predetermined Text
"CONSULTING"
Description of Mark
The mark consists of four white squares in a diamond shape next to the words "Hanscomb Consulting" in white letters, all inside a blue rectangle.
Goods and Services
Business consultation, particularly in the fields of estimating contract work, business and economic feasibility studies and data analysis/dissemination, cost analyses, project risk management, negotiation and settlement of commercial transactions for third parties, scheduling services, cost assessment services; project management services for others for business purposes in the fields of architecture, engineering interior design and urban planning design
Classification Information
International Class
035 - Advertising; business management; business administration; office functions. - Advertising; business management; business administration; office functions.
US Class Codes
100, 101, 102
Class Status Code
8 - Abandoned
Class Status Date
2020-11-03
Primary Code
035
First Use Anywhere Date
2013-07-11
First Use In Commerce Date
2013-07-11
Correspondences
Name
H JAY SPIEGEL
Address
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Trademark Events
Event DateEvent Description
2016-07-15NEW APPLICATION ENTERED IN TRAM
2016-07-18NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
2016-07-19NOTICE OF DESIGN SEARCH CODE E-MAILED
2016-10-21ASSIGNED TO EXAMINER
2016-10-31NON-FINAL ACTION WRITTEN
2016-10-31NON-FINAL ACTION E-MAILED
2016-10-31NOTIFICATION OF NON-FINAL ACTION E-MAILED
2016-10-31TEAS RESPONSE TO OFFICE ACTION RECEIVED
2016-10-31CORRESPONDENCE RECEIVED IN LAW OFFICE
2016-10-31TEAS/EMAIL CORRESPONDENCE ENTERED
2016-11-16APPROVED FOR PUB - PRINCIPAL REGISTER
2016-12-07NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
2016-12-27PUBLISHED FOR OPPOSITION
2016-12-27OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
2016-12-27OPPOSITION PAPERS RECEIVED AT TTAB
2017-01-30OPPOSITION INSTITUTED NO. 999999
2017-01-30CONCURRENT USE PROC. INSTITUTED NO. 999999
2017-01-30OPPOSITION TERMINATED NO. 999999
2020-02-26CONCURRENT USE DISSOLVED
2020-11-03CT DECISION: DISMISSED
2020-11-03CONCURRENT USE TERMINATED NO. 999999
2020-11-03ABANDONMENT - AFTER INTER PARTES DECISION
2020-11-03ABANDONMENT NOTICE E-MAILED - INTER PARTES DECISION