Response to Office Action

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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87218504 DAYTON(Standard Characters, see http://uspto.report/TM/87218504/mark.png) has been amended as follows:

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

In a September 19, 2019 Office Action, registration of Applicant's mark was refused under Trademark Act Section 44(e) on the grounds that Applicant allegedly was not the owner of the foreign registration on the filing date of the U.S. application. As demonstrated in the attached printout from the Canada intellectual property office's website, the foreign registration was assigned to Applicant on or before the filing date of the U.S. application. Therefore, Applicant respectfully submits that the Section 44(e) basis can remain in the application.

EVIDENCE
Evidence in the nature of printout from the Canada intellectual property office's website showing that the foreign registration was assigned to Applicant on or before the filing date of the U.S. application has been attached.
Original PDF file:
evi_38100144103-20190926171404956747_._CIPO_DAYTON_printout.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for eyewear, namely, sunglasses, eyeglasses, eyeglass frames; electric signs; digital signs; mechanical signs; electronic signs; protective helmets for motorcycling
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA792,915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: eyewear, namely, sunglasses, eyeglasses, eyeglass frames; electric signs; non-illuminated electric signs; digital signs; non-illuminated digital signs; mechanical signs; non-illuminated mechanical signs; electronic signs; protective helmets for motorcyclingClass 009 for eyewear, namely, sunglasses, eyeglasses, eyeglass frames; non-illuminated electric signs; non-illuminated digital signs; non-illuminated mechanical signs; protective helmets for motorcycling
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA792,915 registered 03/15/2011 with a renewal date of __________ and an expiration date of 03/15/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /matthew homyk/     Date: 09/26/2019
Signatory's Name: Matthew A. Homyk
Signatory's Position: Attorney of record, Pennsylvania bar member

Signatory's Phone Number: 215-569-5360

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87218504
Internet Transmission Date: Thu Sep 26 17:29:36 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201909261729365
92945-87218504-6107fd268b1ef36e7ea7d48b9
c192db293229e839c98a53cf48381bf6c5405fa4
-N/A-N/A-20190926171404956747