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. 86212676 ZEUS(Standard Characters, see http://uspto.report/TM/86212676/mark.png) has been amended as follows:

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

We are responding to the Office Action 11 June, 2014. In the Office Action, the Examiner raised an objection to the identification of goods, on the grounds that wording “clothing” is indefinite and must be clarified.

In response, we have amended the identification of goods to read “clothing, namely, tank tops, shorts, pants, t-shirts, sweatshirts, hooded sweatshirts, hats and caps”. We submit that this amendment overcomes the objection to the identification of goods.

The Examiner also raised a requirement to provide a copy of the registration to issue from the applicant’s corresponding foreign application. We advise that the applicant’s corresponding Canadian application has not yet matured to registration. We therefore request that further prosecution of this application be suspended, pending receipt of a true copy of the registration to issue from the applicant’s corresponding Canadian application.

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, athletic clothing, sports clothing, and casual clothing
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1661116 filed 01/24/2014]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: clothing, namely, athletic clothing, sports clothing, and casual clothing; clothing, namely, tank tops, shorts, pants, t-shirts, sweatshirts, hooded sweatshirts, hats and capsClass 025 for clothing, namely, tank tops, shorts, pants, t-shirts, sweatshirts, hooded sweatshirts, hats and caps
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1661116 filed 01/24/2014]. 15 U.S.C.Section 1126(d), as amended.

SIGNATURE(S)
Response Signature
Signature: /TJS/     Date: 07/09/2014
Signatory's Name: Timothy J. Sinnott
Signatory's Position: Agent of Record 31,083

Signatory's Phone Number: 1 416 364 7311

The signatory has confirmed that he/she is a Canadian attorney/agent, or an associate thereof, who represents an applicant located in Canada; and he/she is either registered with the USPTO and in good standing as as patent agent under 37 C.F.R. §11.6(c) or has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86212676
Internet Transmission Date: Wed Jul 09 11:44:14 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20140709114414759
943-86212676-50013538397f3fa5db0f2608c11
32a02472522543e5c342fe62b6e59a77f19d65-N
/A-N/A-20140709113855881234