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)

---

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. 87583861 LOUISVILLE(Standard Characters, see http://uspto.report/TM/87583861/mark.png) has been amended as follows:

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

The present Office Action included a refusal of the pending Application on the basis the mark being Primarily Geographically Descriptive. The mark relates to the famous mark LOUISVILLE SLUGGER, and the families of registrations associated with the LOUISVILLE SLUGGER mark, which Applicant owns. The mark has also become distinctive of the goods as evidenced by the ownership of active U.S Registration Nos. 1276401, 2035209 and 5447269. The goods will be sold in Louisville and other locations of the U.S. Applicant has an ongoing contractual relationship with Hillerich & Bradsby relating to the Louisville Slugger Museum & Factory in Louisville, KY. At least a portion of the goods will be sold by the Louisville Slugger Museum & Factory.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Hockey equipment, namely, hockey sticks, goaltender sticks, hockey stick shafts, hockey skates, ice skate blades, skate blade guards, skate blade protective jackets, hockey pucks, hockey balls, hockey goals and nets, hockey gloves, trapper gloves, blockers, body protective articles and equipment specifically designed for hockey, namely, throat protectors, gloves, protective padded hockey pants, body pads, elbow pads, shin guards, leg pads, leg guards, girdles comprising body protective padding, suspenders for use with hockey pants, wrist slash guards, ankle guards, chin protectors, neck guards, mouth guards, and shoulder pads, hockey chest protectors, hockey helmets, visors, face guards, cages, and face masks for such helmets, and hockey equipment bags
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: Hockey equipment, namely, hockey sticks, goaltender sticks, hockey stick shafts, hockey skates, ice skate blades, skate blade guards, skate blade protective jackets, hockey pucks, hockey balls, hockey goals and nets, hockey gloves, trapper gloves, blockers, body protective articles and equipment specifically designed for hockey, namely, throat protectors, gloves, protective padded hockey pants, body pads, elbow pads, shin guards, leg pads, leg guards, girdles comprising body protective padding, suspenders for use with hockey pants, wrist slash guards, ankle guards, chin protectors, neck guards, mouth guards, and shoulder pads, hockey chest protectors, hockey helmets, visors, face guards, cages, and face masks for such helmets, and hockey equipment bags; Hockey equipment, namely, hockey sticks, goaltender sticks, hockey stick shafts, hockey skates, ice skate blades, skate blade guards, skate blade protective jackets, hockey pucks, field hockey balls, hockey goals and nets, hockey gloves, goalie trapper gloves, goalie blockers, body protective articles and equipment specifically designed for hockey, namely, throat protectors, gloves, protective padded hockey pants, body pads, elbow pads, shin guards, leg pads, leg guards, girdles comprising body protective padding, suspenders for use with hockey pants, wrist slash guards, ankle guards, chin protectors, neck guards, mouth guards, and shoulder pads, hockey chest protectors, ball cages, and bags specifically adapted for hockey equipment.Class 028 for Hockey equipment, namely, hockey sticks, goaltender sticks, hockey stick shafts, hockey skates, ice skate blades, skate blade guards, skate blade protective jackets, hockey pucks, field hockey balls, hockey goals and nets, hockey gloves, goalie trapper gloves, goalie blockers, body protective articles and equipment specifically designed for hockey, namely, throat protectors, gloves, protective padded hockey pants, body pads, elbow pads, shin guards, leg pads, leg guards, girdles comprising body protective padding, suspenders for use with hockey pants, wrist slash guards, ankle guards, chin protectors, neck guards, mouth guards, and shoulder pads, hockey chest protectors, ball cages, and bags specifically adapted for hockey equipment.
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 AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Wilson Sporting Goods Co., a corporation of Illinois, having an address of
      
      130 East Randolph Street, Suite 6001 Prudential Plaza
      Chicago, Illinois 60601
      United States

      XXXX (authorized)
      773-714-6498
Proposed: Wilson Sporting Goods Co., a corporation of Delaware, having an address of
      130 East Randolph Street, Suite 600
      1 Prudential Plaza
      Chicago, Illinois 60601
      United States
      XXXX (authorized)
      773-714-6498

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
TERENCE P. O'BRIEN
WILSON SPORTING GOODS CO.
8750 W. BRYN MAWR AVE.
CHICAGO
Illinois
US
60631

Proposed:
TERENCE P. O'BRIEN of Wilson Sporting Goods Co., having an address of
1 Prudential Plaza 130 East Randolph Street, Suite 600 Chicago, Illinois 60601
United States
terence.obrien@amersports.com;kristyn.rossetti@amersports.com
7737146498
The docket/reference number is LOUISVILL/US .



ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 1276401, 2035209, and 5447269.


SIGNATURE(S)
Response Signature
Signature: /Terence P. O'Brien/     Date: 06/05/2018
Signatory's Name: Terence P. O'Brien
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 7737146498

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:    TERENCE P. O'BRIEN
   Wilson Sporting Goods Co.
   1 Prudential Plaza
   130 East Randolph Street, Suite 600
   Chicago, Illinois 60601
        
Serial Number: 87583861
Internet Transmission Date: Tue Jun 05 18:17:15 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180605181715
395839-87583861-610e68325257726a7153efda
4dc99888fa967ab88fce6840999ec338723de347
29-N/A-N/A-20180605174712654720