Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
86736668 |
LAW OFFICE ASSIGNED |
LAW OFFICE 103 |
MARK SECTION |
MARK |
http://tmng-al.gov.uspto.report/resting2/api/img/86736668/large |
LITERAL ELEMENT |
STEEL |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Video recordings on optical discs, namely, compact discs, DVD's and prerecorded magneto optical discs; downloadable videos; online
videos; and providing a website, all of the foregoing featuring instructional tutorial, exhibitions and shows related to skateboarding |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Video recordings on optical discs, namely, compact discs, DVD's and prerecorded magneto optical
discs; Video recordings on optical disks, namely, compact discs, DVD's and prerecorded magneto optical discs, and downloadable video recordings; downloadable videos; all of the forgoing featuring instructional tutorials, exhibitions and shows related to skateboarding;
online videos; and providing a website, all of the foregoing featuring instructional tutorial, exhibitions and shows related to
skateboarding |
FINAL DESCRIPTION |
Video recordings on optical disks, namely, compact discs, DVD's and prerecorded magneto optical discs, and downloadable video
recordings; all of the forgoing featuring instructional tutorials, exhibitions and shows related to skateboarding |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (026)(current) |
INTERNATIONAL CLASS |
026 |
DESCRIPTION |
Shoelaces, patches and buttons |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (026)(proposed) |
INTERNATIONAL CLASS |
026 |
TRACKED TEXT DESCRIPTION |
Shoelaces, patches and buttons; Shoelaces, ornamental cloth patches
and buttons |
FINAL DESCRIPTION |
Shoelaces, ornamental cloth patches and buttons |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (028)(current) |
INTERNATIONAL CLASS |
028 |
DESCRIPTION |
Skateboards and Skateboard accessories, namely, wax, tools, decks, wheels, axles, trucks, grip tapes, paddles, paddle boards, rails,
riser pads, knee pads, elbow pads, skateboard gloves and bags for skateboards |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (028)(proposed) |
INTERNATIONAL CLASS |
028 |
TRACKED TEXT DESCRIPTION |
Skateboards and Skateboard accessories, namely, wax, tools, decks, wheels, axles, trucks, grip tapes,
paddles, paddle boards, rails, riser pads, knee pads, elbow pads, skateboard gloves and bags for skateboards; Skateboards and skateboard accessories, namely wax,
decks wheels, grip tapes, paddle boards, riser pads, athletic protective knee pads, athletic protective elbow pads, skateboard gloves and bags for skateboards |
FINAL DESCRIPTION |
Skateboards and skateboard accessories, namely wax, decks wheels, grip tapes, paddle boards, riser pads, athletic protective knee pads,
athletic protective elbow pads, skateboard gloves and bags for skateboards |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(class added) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Providing on-line videos featuring instructional tutorials, exhibitions and shows related to skateboarding, not downloadable; and
providing a website featuring non-downloadable videos featuring instructional tutorials, exhibitions and shows related to skateboarding |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
Applicant wishes to thank Examiner In for the courtesy extended in the telephone interview on Thursday, May 5, 2016. During this interview the
description of goods for class 28 was discussed. It was agreed that the goods decks and wheels would remain in the description and the goods tools, axles, trucks, paddles and rails would be removed
from the description of goods. The amended description of goods reflects this agreement and the description should now overcome the rejection based on being merely descriptive. The remainder of the
description of goods is amended in accordance with the suggestions in the Office Action. In view of the amended description of goods this application should now be in condition for allowance. |
CORRESPONDENCE SECTION |
ORIGINAL ADDRESS |
JACKIE SCHWARTZ
Jack Schwartz & Associates Pllc
245 5th Ave Rm 1902
New York
New York
US
10016-8716
|
NEW CORRESPONDENCE SECTION |
NAME |
JACKIE SCHWARTZ |
FIRM NAME |
Jack Schwartz & Associates Pllc |
DOCKET/REFERENCE NUMBER |
1110-15 |
STREET |
6165 Jericho Turnpike |
CITY |
Commack |
STATE |
New York |
ZIP/POSTAL CODE |
10016-8716 |
COUNTRY |
United States |
PHONE |
631-499-2790 |
FAX |
631-499-2791 |
EMAIL |
jack@jsa-iplaw.com |
AUTHORIZED EMAIL COMMUNICATION |
Yes |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
325 |
TOTAL FEES DUE |
325 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/js/ |
SIGNATORY'S NAME |
Jackie Schwartz |
SIGNATORY'S POSITION |
Attorney |
SIGNATORY'S PHONE NUMBER |
631-499-2790 |
DATE SIGNED |
05/10/2016 |
RESPONSE SIGNATURE |
/js/ |
SIGNATORY'S NAME |
Jackie Schwartz |
SIGNATORY'S POSITION |
Attorney |
SIGNATORY'S PHONE NUMBER |
631-499-2790 |
DATE SIGNED |
05/10/2016 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue May 10 12:14:28 EDT 2016 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0160510121428160497-86736
668-5503de16829b4cf359764
78707f51d5c78660bff7593c1
b8c17c6338fee5199d9c2-CC-
9713-20160510112348212330 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 07/31/2017) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
86736668 STEEL(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86736668/large) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Video recordings on optical discs, namely, compact discs, DVD's and prerecorded magneto optical discs; downloadable videos; online videos; and providing a website, all
of the foregoing featuring instructional tutorial, exhibitions and shows related to skateboarding
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: Video recordings on optical discs, namely, compact discs, DVD's and prerecorded magneto optical discs;
Video recordings on optical disks, namely, compact discs, DVD's and prerecorded magneto optical discs, and downloadable video recordings;
downloadable
videos;
all of the forgoing featuring instructional tutorials, exhibitions and shows related to skateboarding;
online
videos;
and providing a website, all of the foregoing featuring instructional tutorial, exhibitions and shows related to skateboardingClass 009 for Video
recordings on optical disks, namely, compact discs, DVD's and prerecorded magneto optical discs, and downloadable video recordings; all of the forgoing featuring instructional tutorials, exhibitions
and shows related to skateboarding
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 026 for Shoelaces, patches and buttons
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: Shoelaces, patches and buttons;
Shoelaces, ornamental cloth patches and buttonsClass 026 for
Shoelaces, ornamental cloth patches and buttons
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 Skateboards and Skateboard accessories, namely, wax, tools, decks, wheels, axles, trucks, grip tapes, paddles, paddle boards, rails, riser pads, knee pads, elbow pads,
skateboard gloves and bags for skateboards
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: Skateboards and Skateboard accessories, namely, wax, tools, decks, wheels, axles, trucks, grip tapes, paddles, paddle boards, rails,
riser pads, knee pads, elbow pads, skateboard gloves and bags for skateboards;
Skateboards and skateboard accessories, namely wax, decks wheels, grip tapes,
paddle boards, riser pads, athletic protective knee pads, athletic protective elbow pads, skateboard gloves and bags for skateboardsClass 028 for Skateboards and skateboard accessories, namely
wax, decks wheels, grip tapes, paddle boards, riser pads, athletic protective knee pads, athletic protective elbow pads, skateboard gloves and bags for skateboards
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 041 for Providing on-line videos featuring instructional tutorials, exhibitions and shows related to skateboarding, not downloadable; and providing a website featuring
non-downloadable videos featuring instructional tutorials, exhibitions and shows related to skateboarding
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.
CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
JACKIE SCHWARTZ
Jack Schwartz & Associates Pllc
245 5th Ave Rm 1902
New York
New York
US
10016-8716
Proposed:
JACKIE SCHWARTZ of Jack Schwartz & Associates Pllc, having an address of
6165 Jericho Turnpike Commack, New York 10016-8716
United States
jack@jsa-iplaw.com
631-499-2790
631-499-2791
The docket/reference number is 1110-15 .
ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant wishes to thank Examiner In for the courtesy extended in the telephone interview on Thursday, May 5, 2016. During this interview the description of goods for class 28 was discussed. It was
agreed that the goods decks and wheels would remain in the description and the goods tools, axles, trucks, paddles and rails would be removed from the description of goods. The amended description of
goods reflects this agreement and the description should now overcome the rejection based on being merely descriptive. The remainder of the description of goods is amended in accordance with the
suggestions in the Office Action. In view of the amended description of goods this application should now be in condition for allowance.
FEE(S)
Fee(s) in the amount of $325 is being submitted.
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. § 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
allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally
believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in
connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of
the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective
membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over
the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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.
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion
or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
§§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark
application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the
mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or
certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention,
and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of
the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other
persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
Signature: /js/ Date: 05/10/2016
Signatory's Name: Jackie Schwartz
Signatory's Position: Attorney
Signatory's Phone Number: 631-499-2790
Response Signature
Signature: /js/ Date: 05/10/2016
Signatory's Name: Jackie Schwartz
Signatory's Position: Attorney
Signatory's Phone Number: 631-499-2790
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.
Mailing Address: JACKIE SCHWARTZ
Jack Schwartz & Associates Pllc
6165 Jericho Turnpike
Commack, New York 10016-8716
RAM Sale Number: 86736668
RAM Accounting Date: 05/10/2016
Serial Number: 86736668
Internet Transmission Date: Tue May 10 12:14:28 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2016051012142816
0497-86736668-5503de16829b4cf35976478707
f51d5c78660bff7593c1b8c17c6338fee5199d9c
2-CC-9713-20160510112348212330