Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85657069 PT (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85657069) has been amended as follows:

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

In the Office Action dated October 10, 2012, the examining attorney denied registration of the proposed mark PT on the ground that the mark is a merely decorative or ornamental feature of the applicant's goods and, therefore, does not identify and distinguish the applicant's goods from those of others.  The examining attorney's opinion is based on the specimen of record, which is a baseball cap that shows the mark PT on the front of the cap.

The examining attorney states in the Office Action that the applicant may overcome the refusal to register the mark by submitting evidence that the applied-for mark is an indicator of secondary source or sponsorship for the identified goods.  That is, the applicant may overcome the refusal by submitting evidence showing use of the mark in connection with other goods and/or services that the public would recognize the applicant as the secondary source of or sponsor for the identified goods.

Although the applicant disagrees with the examining attorney's opinion that the proposed mark is a merely decorative or ornamental feature of the applicant's goods, the applicant is submitting herewith a photo that shows use of the mark PT on lacrosse helmets.  Since the applicant is using the mark on baseball caps and lacrosse helmets, the public will undoubtedly perceive the proposed mark PT as a source indicator for the applicant's goods.  Accordingly, the applicant respectfully requests that the examining attorney withdraw the refusal to register the proposed mark and approve the applicant's mark for publication. 

EVIDENCE
Evidence in the nature of Photos of lacrosse helmet displaying the mark PT has been attached. Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing, namely, socks, baseball caps, shorts, t-shirts, long sleeve shirts, penny shirts, hard hats and helmets
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/00/2008 and first used in commerce at least as early as 05/00/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Clothing, namely, socks, baseball caps, shorts, t-shirts, long sleeve shirts, penny shirts, hard hats and helmets; Clothing, namely, socks, baseball caps, shorts, t-shirts, long sleeve shirts and penny athletic practice shirtsClass 025 for Clothing, namely, socks, baseball caps, shorts, t-shirts, long sleeve shirts and penny athletic practice shirts
Filing Basis: Section 1(a), Use in Commerce:The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/00/2008 and first used in commerce at least as early as 05/00/2009 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Lacrosse sport helmets and hard hats
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/00/2008 and first used in commerce at least as early as 05/00/2009 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 009 . The specimen(s) submitted consists of Photo of lacrosse helmet displaying mark and supporting declaration .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
JPG file(s):
Specimen File1
Original PDF file:
SPN0-38971052-190031315_._PT_Declaration_.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /cmbaker/     Date: 12/27/2012
Signatory's Name: Christine M. Baker
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 212 935 3000

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.

        
RAM Sale Number: 8502
RAM Accounting Date: 12/28/2012
        
Serial Number: 85657069
Internet Transmission Date: Thu Dec 27 19:47:25 EST 2012
TEAS Stamp: USPTO/ROA-XX.XX.XXX.X-201212271947258549
10-85657069-490b6bf4b5f4730bd965922f9cf3
cb4-DA-8502-20121227190031315077