| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Input Field |
Entered |
| SERIAL NUMBER | 76544570 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| DATE OF NOTICE OF ABANDONMENT | 10/25/2004 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| 1. Section 2(d) Refusal
Effective June 3, 2004, Paul Reed Smith Guitars, Registrant of record for U.S. Registration Nos. 2581308; 2646763; 2667018; and 2632892, assigned all of its right, title and interest in and to those Registrations, and the marks claimed therein, to Applicant, Cadestansa, LLC. A copy of the Trademark Assignment, and Exhibit A thereto, by which this assignment occurred is attached hereto as JPEG files. (Applicant mailed a copy of this Trademark Assignment to the U.S. Patent and Trademark Office's Assignment Services Division for recordation on October 19, 2004, but has not yet received reel and frame information from that Division.) Since Applicant is now owner of the cited Registrations, Applicant respectfully requests that the Section 2(d) refusal based thereon be withdrawn. 2. Section 2(e)(4) - Surname Refusal Applicant respectfully submits that it has enjoyed, through itself or its predecessors in interest, continuous and substantially exclusive use of the SANTANA mark for musical sound recordings for the more than thirty-year period immediately proceeding the filing of this Application and that the SANTANA mark has thereby become distinctive of Applicant's musical sound recordings. Accordingly, Applicant requests that its Application be amended to allege this fact. As indicated in the Supplemental Statements Section below, Registration is now being sought under the provision of Section 2(f) of the Trademark Act of 1946, as amended (15 U.S.C. Section 1052(f)). 3. Consent of Individual SANTANA identifies a particular living individual, namely Carlos Santana, whose consent will be submitted to the Trademark Attorney under separate cover.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT11\IMAGEOUT 11\765\445\76544570\xml3\ POA0002.JPG |
| EVIDENCE FILE NAME | \\TICRS\EXPORT11\IMAGEOUT 11\765\445\76544570\xml3\ POA0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | The evidence consists of a copy of a Trademark Assignment and Exhibit A thereto. |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) | "The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." |
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Michael J. Dalton/ |
| SIGNATORY'S NAME | Michael J. Dalton |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 12/14/2004 |
| RESPONSE SIGNATURE | /Michael J. Dalton/ |
| SIGNATORY'S NAME | Michael J. Dalton |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 12/14/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 14 14:23:54 EST 2004 |
| TEAS STAMP | USPTO/POA-XXX.XX.XX.XXX-2 0041214142354484612-76544 570-25096567b3f911c7bfb80 efa286555837c7-CC-1236-20 041214141407905768 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Application serial no. 76544570 is amended as follows: | |
| PETITION | |
| Petition Statement | |
| Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. | |
| RESPONSE TO OFFICE ACTION | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| 1. Section 2(d) Refusal
Effective June 3, 2004, Paul Reed Smith Guitars, Registrant of record for U.S. Registration Nos. 2581308; 2646763; 2667018; and 2632892, assigned all of its right, title and interest in and to those Registrations, and the marks claimed therein, to Applicant, Cadestansa, LLC. A copy of the Trademark Assignment, and Exhibit A thereto, by which this assignment occurred is attached hereto as JPEG files. (Applicant mailed a copy of this Trademark Assignment to the U.S. Patent and Trademark Office's Assignment Services Division for recordation on October 19, 2004, but has not yet received reel and frame information from that Division.) Since Applicant is now owner of the cited Registrations, Applicant respectfully requests that the Section 2(d) refusal based thereon be withdrawn. 2. Section 2(e)(4) - Surname Refusal Applicant respectfully submits that it has enjoyed, through itself or its predecessors in interest, continuous and substantially exclusive use of the SANTANA mark for musical sound recordings for the more than thirty-year period immediately proceeding the filing of this Application and that the SANTANA mark has thereby become distinctive of Applicant's musical sound recordings. Accordingly, Applicant requests that its Application be amended to allege this fact. As indicated in the Supplemental Statements Section below, Registration is now being sought under the provision of Section 2(f) of the Trademark Act of 1946, as amended (15 U.S.C. Section 1052(f)). 3. Consent of Individual SANTANA identifies a particular living individual, namely Carlos Santana, whose consent will be submitted to the Trademark Attorney under separate cover.
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| Evidence | |
| Evidence in the nature of The evidence consists of a copy of a Trademark Assignment and Exhibit A thereto. has been attached. | |
| Evidence-1 | |
| Evidence-2 | |
| Additional Statements | |
| "The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." | |
| Fees | |
| Fee(s) in the amount of $100 is being submitted. | |
| Declaration Signature |
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| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /Michael J. Dalton/ Date: 12/14/2004 | |
| Signatory's Name: Michael J. Dalton | |
| Signatory's Position: Attorney | |
| Petition/Response Signature | |
| Signature: /Michael J. Dalton/ Date: 12/14/2004 | |
| Signatory's Name: Michael J. Dalton | |
| Signatory's Position: Attorney | |
| Serial Number: 76544570 | |
| Internet Transmission Date: Tue Dec 14 14:23:54 EST 2004 | |
| TEAS Stamp: USPTO/POA-XXX.XX.XX.XXX-2004121414235448 4612-76544570-25096567b3f911c7bfb80efa28 6555837c7-CC-1236-20041214141407905768 |
