TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

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

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PTO Form 1960 (Rev 9/2007)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 86006629 NITRO(Standard Characters, see http://uspto.report/TM/86006629/mark.png) has been amended as follows:

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

Applicant hereby responds to the Office Action dated January 5, 2014.  In the Office Action, the Examining Attorney refused to register the mark NITRO in International Class 12 for “badges for vehicles” stating that the specimen did not show the mark on actual goods or packaging, or displays associated with the actual goods at their point of sale.  Applicant respectfully disagrees.  However, in response, Applicant is submitting a substitute specimen consisting of point of sale screenshots from Applicant’s Mopar website / online catalog depicting how a consumer would purchase a NITRO badge via the internet.  This substitute specimen meets the elements required of an acceptable webpage specimen pursuant to TMEP §904.03(i).  Specifically, the substitute specimen meets the following elements required: 

 

1.       Contains a picture and textual description of the identified goods;

 

2.       Shows the mark sufficiently near the picture / description of the goods; and

 

3.       Provides a means for ordering the goods including the price, “add to cart” link and “check out” link (at this point, the consumer would provide payment and shipping information).

 

For these reasons, Applicant requests that the Examining Attorney approve the Application and that the mark be registered on the Principal Register.

EVIDENCE
Evidence in the nature of substitute specimen as described in the Argument and Specimen Description sections has been attached.
Original PDF file:
evi_129975245-141903246_._1.5.14_Final_Office_Action_-_Substitute_SPECIMEN.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Badges for vehicles
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 09/00/2006 and first used in commerce at least as early as 09/00/2006 , and is now in use in such commerce.

Proposed: Class 012 for Badges for vehicles
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 09/00/2006 and first used in commerce at least as early as 09/00/2006 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 012 . The specimen(s) submitted consists of Point of sale screenshots from online catalog depicting how a consumer would purchase a NITRO badge via the internet (including a picture and textual description of the identified goods; the NITRO mark sufficiently near the picture / description of goods; and necessary information to order the identified goods including the price, add to cart link and check out link) .
"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].
Original PDF file:
SPU0-129975245-141903246_._1.5.14_Final_Office_Action_-_Substitute_SPECIMEN.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Kristen I. Spano/      Date: 06/23/2014
Signatory's Name: Kristen I. Spano
Signatory's Position: Senior Staff Attorney
Signatory's Phone Number: 248-512-6475


Request for Reconsideration Signature
Signature: /Kristen I. Spano/     Date: 06/23/2014
Signatory's Name: Kristen I. Spano
Signatory's Position: Senior Staff Attorney

Signatory's Phone Number: 248-512-6475

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 86006629
Internet Transmission Date: Mon Jun 23 15:46:27 EDT 2014
TEAS Stamp: USPTO/RFR-XXX.X.XX.XXX-20140623154627711
263-86006629-500265d375d735d9e385a13c51b
9b712cff49472ddd81472d7d1829f666ee616960
-N/A-N/A-20140623141903246935