Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79027871 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Applicant is enclosing herewith a Substitute Power of Attorney form.  Please enter this Substitute Power of Attorney and Change in Correspondence Address in the record of this case.

Evidence
Evidence in the nature of Substitute Power of Attorney form - Page 1 of 2 Substitute Power of Attorney form - Page 2 of 2 has been attached.
Evidence-1
Evidence-2


Procedural Matters/Informalities
Applicant proposes to amend the following:
Original: CARRERA S.P.A. a joint stock companyhaving an address of Lieu-dit Caldierino I-37042 CALDIERO , IT .
Proposed: CARRERA S.P.A., a joint stock company legally organized under the laws of Italy, having an address of Lieu-dit Caldierino I-37042 CALDIERO, Italy , whose e-mail address is XXXX.

Correspondence Address Change
Applicant proposes to amend the following:
Original: Bugnion S.P.A. Via G. Garibaldi, 19 I-37121 VERONA ITALY
Proposed: John P. Murtaugh of Pearne & Gordon LLP, having an address of 1801 East 9th Street, Suite 1200 Cleveland, Ohio United States 44114-3108, whose e-mail address is tmdocket@pearnegordon.com, whose phone number is 216-579-1700 and whose fax number is 216-579-6073.
Additional Statements

"The foreign wording in the mark translates into English as RACE."

Applicant’s counsel thanks the Examining Attorney for the careful consideration given the application. In response to the Examining Attorney’s inquiry, applicant has submitted an English translation of the mark. The English translation of CARRERA is RACE. Registration of applicant’s mark was refused because of a likelihood of confusion with U.S. Reg. No. 3128883. On April 17, 2007, applicant filed a Petition for Cancellation of Reg. No. 3128883. This cancellation proceeding has been assigned Cancellation No. 92047388. Applicant hereby requests that the present application be suspended pending conclusion of cancellation proceeding No. 92047388.

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant 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). 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). 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: /johnpmurtaugh/      Date: 04/19/2007
Signatory's Name: John P. Murtaugh
Signatory's Position: Attorney

Response Signature
Signature: /johnpmurtaugh/     Date: 04/19/2007
Signatory's Name: John P. Murtaugh
Signatory's Position: Attorney

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.
Mailing Address:    John P. Murtaugh
   Pearne & Gordon LLP
   1801 East 9th Street, Suite 1200
   Cleveland, Ohio 44114-3108
        
Serial Number: 79027871
Internet Transmission Date: Thu Apr 19 14:06:11 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2007041914061196
0885-79027871-370e125812ea1c9cb2d50294ec
ae8d79c8e-N/A-N/A-20070419133642999812