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. 86529017 LOST CREEK FISHING GEAR AND ACCESSORIES (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86529017/large) has been amended as follows:

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

Likelihood of Confusion

To remove the Section 2(d) partial refusal, the Applicant has deleted Classes 18 and 25 from the Application.

  

The Term LOST CREEK is Not Primarily Geographically Descriptive

The Applicant respectfully submits that it need not disclaim the term LOST CREEK because it is not geographically descriptive. The Applicant’s goods do not originate from the Lost Creek area of Utah and consumers are not likely to believe that they originate from that area.  Instead, the Applicant chose the term LOST CREEK for its marks because its products are fishing products and LOST CREEK is suggestive getting outside and fishing.

To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the Examining Attorney must show the following three elements:

 

            (1) the primary significance of the mark is a generally known geographic location;

            (2) the goods or services originate in the place identified in the mark; and

            (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.  TMEP § 1210.01(a).

The Examining Attorney cannot show meet all elements of this test.  Although the term LOST CREEK could refer to the Lost Creek area of Utah, the term is not primarily geographically descriptive.  The Applicant encloses evidences of other uses of the term Lost Creek from across the country for various other services.  For example, there is a Lost Creek Ranch & Spa in Wyoming, an Inn at Lost Creek in Colorado, a Lost Adventures kayaking business in northern Wisconsin, and a Lost Creek golf club in Pennsylvania.  The Applicant encloses evidence of these other uses of Lost Creek. 

The Applicant is a national chain of sporting goods stores.  Its products have no connection to Lost Creek, Utah, and are sold nationwide in its retail stores.  As the Applicant answered below in response the Examining Attorney, the Applicant’s goods have no connection to Lost Creek, Utah.  Thus, the goods do not originate from the Yukon Territory.

Additional Information Required

The Examining Attorney requested additional information with a question:

• Will the applicant’s goods be manufactured, packaged, shipped from, come from, sold in or have any other connection with Lost Creek, Utah? 

    Answer: No.

EVIDENCE
Evidence in the nature of Evidence of other uses of Lost Creek has been attached.
Original PDF file:
evi_209236103228-20151119145033616063_._EVIDENCE.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 018 for Wading staffs, lumbar packs

Applicant hereby deletes the following class of goods/services from the application.
Class 025 for Clothing for fishing, namely, socks, waders, booties, vests, hats, hat clips, shoes, shirts, chest packs, hooded sweatshirts, jackets, coats, rain wear, bibs, gloves

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Power ice augers used for ice fishing
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.

Proposed:
Tracked Text Description: Power ice augers used for ice fishing; bags specially adapted for holding and carrying power ice augers used for ice fishingClass 007 for Power ice augers used for ice fishing; bags specially adapted for holding and carrying power ice augers used for ice fishing
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for Hand tools for use in tying artificial fishing flies, namely, cutters, pliers; fishing knives; hand-powered ice augers used for ice fishing
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.

Proposed:
Tracked Text Description: Hand tools for use in tying artificial fishing flies, namely, cutters, pliers; Hand tools for use in tying artificial fishing flies, namely, fishing line cutters, pliers; fishing knives; hand-powered ice augers used for ice fishing; bags specially adapted for holding and carrying hand-powered ice augers used for ice fishing, ice skimmersClass 008 for Hand tools for use in tying artificial fishing flies, namely, fishing line cutters, pliers; fishing knives; hand-powered ice augers used for ice fishing; bags specially adapted for holding and carrying hand-powered ice augers used for ice fishing, ice skimmers
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Pre-recorded DVDs featuring fishing, radios, radio antennas, carrying cases for radios; fish weighing scales; underwater cameras; batteries and battery chargers for boat motors
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.

Proposed:
Tracked Text Description: Pre-recorded DVDs featuring fishing, radios, radio antennas, carrying cases for radios; fish weighing scales; underwater cameras; batteries and battery chargers for boat motors; fish findersClass 009 for Pre-recorded DVDs featuring fishing, radios, radio antennas, carrying cases for radios; fish weighing scales; underwater cameras; batteries and battery chargers for boat motors; fish finders
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Boats; boat covers, boat motor covers, boat fenders, downrigger covers, sleds for ice fishing, auger bags, tables and chairs for use in ice fishing tents
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.

Proposed:
Tracked Text Description: Boats; boat covers, boat motor covers, boat fenders, downrigger covers, sleds for ice fishing, auger bags, tables and chairs for use in ice fishing tents; fitted boat covers, fitted boat motor covers, boat fenders, fitted downrigger covers, sleds for ice fishing for transport purposesClass 012 for Boats; fitted boat covers, fitted boat motor covers, boat fenders, fitted downrigger covers, sleds for ice fishing for transport purposes
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Fishing maps; books featuring fishing; decals, stickers, pictures
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.

Proposed: Class 016 for Fishing maps; books featuring fishing; decals, stickers, pictures
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 022 for Ice fishing tents, boat straps
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.

Proposed:
Tracked Text Description: Ice fishing tents, boat straps; Ice fishing tents, all-purpose boat straps comprised of synthetic textile materialsClass 022 for Ice fishing tents, all-purpose boat straps comprised of synthetic textile materials
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Fishing equipment, namely, rods, downrigger rods, reels, sinkers, bobbers, tippets, anchors, lures, lure wraps, floatants, fly line backing, leaders, fishing line, fishing flies, terminal tackle, terminal rigs, artificial fishing bait, ice skimmers, ice fishing rod holders, stringers; fishing rod cases, fishing reel cases, grips for fishing reels, fishing rod racks, fishing fly boxes, fishing tackle boxes, fishing tackle bags; inflatable hammocks for recreational use in water, ice fishing strike indicator; inflatable float tubes for fishing; fish finders; clam guns; crab traps
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.

Proposed:
Tracked Text Description: Fishing equipment, namely, rods, downrigger rods, reels, sinkers, bobbers, tippets, anchors, lures, lure wraps, floatants, fly line backing, leaders, fishing line, fishing flies, terminal tackle, terminal rigs, artificial fishing bait, ice skimmers, ice fishing rod holders, stringers; Fishing equipment, namely, rods, downrigger rods, reels, sinkers, bobbers, tippets, lures, lure wraps, floatants, fly line backing, leaders, fishing line, fishing flies, terminal tackle, terminal rigs, artificial fishing bait, ice fishing rod holders, stringers; fishing rod cases, fishing reel cases, grips for fishing reels, fishing rod racks, fishing fly boxes, fishing tackle boxes, fishing tackle bags; inflatable hammocks for recreational use in water, ice fishing strike indicator; inflatable float tubes for fishing; fish finders; clam guns; sleds for ice fishing for recreational use; crab trapsClass 028 for Fishing equipment, namely, rods, downrigger rods, reels, sinkers, bobbers, tippets, lures, lure wraps, floatants, fly line backing, leaders, fishing line, fishing flies, terminal tackle, terminal rigs, artificial fishing bait, ice fishing rod holders, stringers; fishing rod cases, fishing reel cases, grips for fishing reels, fishing rod racks, fishing fly boxes, fishing tackle boxes, fishing tackle bags; inflatable hammocks for recreational use in water, ice fishing strike indicator; inflatable float tubes for fishing; clam guns; sleds for ice fishing for recreational use
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 020 (Original Class: 018 ) for Tables and chairs for use in ice fishing tents
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 026 (Original Class: 025 ) for Hat Clips
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use FISHING GEAR AND ACCESSORIES apart from the mark as shown.


Description of mark
The mark consists of the lettering "LC", with the "L" above the "C", in the shape of a stylized river. To the right of this wording is the wording "LOST CREEK", beneath which, in smaller font, is the wording "FISHING GEAR AND ACCESSORIES.

SIGNATURE(S)
Response Signature
Signature: /Garrett Weber/     Date: 11/20/2015
Signatory's Name: Garrett M. Weber
Signatory's Position: Attorney of Record (Mn)

Signatory's Phone Number: 612-371-3296

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86529017
Internet Transmission Date: Fri Nov 20 10:51:55 EST 2015
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20151120105155
288623-86529017-540abfd9c177ba312c3fe44b
91488bd6bc4855e16c079c61e486245f0606d971
9cb-N/A-N/A-20151120104610123370