Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77444777 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Office Action dated July 31, 2008, Applicant requests reconsideration of this application in view of the following Amendment and Remarks.

With regard to cited US Registration No. 0163019 for the BARBOUR'S & Design mark, Applicant wishes to advise that a Nunc Pro Tunc Assignment transferring ownership of Reg. No. 0163019 from Coats American, Inc. to J. & P. Coats, Limited was recorded in the U.S. Patent and Trademark Office on January 6, 2009, Reel/Frame 003914/0076. 

Please enter the following sentence in the present application. "Applicant is the owner of U.S. Registration No. 0163019." 

With regard to Secion 2(f) Acquired Distinctiveness, please enter the following sentence in the present application.  "The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration No. 1100803 on the Principal Register for the same mark for related goods and/or services."

 

ADDITIONAL STATEMENTS
Claim of Prior Registration(s)
Applicant claims ownership of U.S. Registration Number(s) 0163019, 1100803.

Section 2(f), based on Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s) 1100803.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. 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: /Brian M. Davis/      Date: 01/26/2009
Signatory's Name: Brian M. Davis
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /Brian M. Davis/     Date: 01/26/2009
Signatory's Name: Brian M. Davis
Signatory's Position: Attorney for Applicant

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: 77444777
Internet Transmission Date: Mon Jan 26 14:53:54 EST 2009
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2009012614535470
5652-77444777-4405078b6f2b79542ff9fe79fd
f9a89e6d-N/A-N/A-20090126141623324309