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. 87656063 STREAMLINE(Standard Characters, see http://uspto.report/TM/87656063/mark.png) has been amended as follows:

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

Response to Office Action This is in response to the Office Action of February 8, 2018 which objected to the identification and classification of some of the goods and made a partial refusal for asserted likelihood of confusion. In response, please amend the description of the goods as follows and consider the following remarks in support of the allowance and publication of this application as amended herein. Amended Description of the Classification and Identification of Goods Please amend the classification and identification of the goods to read as follows: In class 25 Clothing and Headgear Namely, T-Shirts, Polo Shirts, Hoodies, Caps being headwear, beanies, and wristbands as clothing. In class 28 Sporting Articles Namely Disc Golf Discs, Disc Golf Lanyards specifically adapted for disc golf bags, and back straps specifically adapted for disc golf bags. Remarks Identification of Goods The classification and identification of goods have been amended to more specifically identify some of the goods and to place all of the goods in the proper international class 25 or 28 as the case may be. Accordingly, no further classes of goods and additional associated fees are required or needed. No Likelihood of Confusion Registration was refused for all of the goods except disc golf discs in Class 28 in view of each of the following three registrations. For at least the following reasons, there is no likelihood of confusion in view of the amended identification of Applicant?s goods, differing channels of distribution, significant purchase price and knowledge and sophistication of ordinary prospective purchasers. Streamline Registration 235414 The ?414 registration is for women?s and girl?s swimwear, leotards, and girdles and is owned by A&H Sportswear Company, Inc. A&H is a manufacturer of women?s upscale swimswear which it sells through nationally known upscale clothing stores and its own only two retail outlet stores. This women?s swimwear is sold at relatively high prices and is purchased by fashion and appearance conscious women and girls who carefully examine the swimwear and will not be deceived or confused as to its source. The STREAMLINE mark suggests that its women?s swimsuits contribute to a slim appearance and indeed they are advertised by registrant as giving the appearance of ?losing 10 pounds in the ten seconds it takes to put it on.? In contrast with respect to Applicant?s goods there is no meaning to or expectation of prospective purchasers with respect to its STREAMLINE mark for its goods and thus, it is arbitrary. In further contrast, Applicant?s clothing is typically sold by sporting goods stores and purchased by knowledgeable disc golf players and enthusiasts who likewise will carefully examine the clothing and golf disc products and not be confused or deceived as to their source. Moreover, Applicant MVP Disc Sports does not know of and has not experienced any actual confusion between one of its disc golf products and/or related clothing items and the ?414 registrant?s women and girls swimwear, leotards and girdles. Due to the significantly different nature of the Applicant?s and the ?414 registrant?s goods, their purchase by sophisticated and knowledgeable customers, relatively high prices thereby prohibiting casual or impulsive purchases, and their sales through different retail outlets there is no likelihood of confusion between Applicant?s goods and the 414 registrant?s, upscale swim suits, leotards, and girdles. Based on the A&H website they do not appear to be selling leotards and girdles at all much less under the STREAMLINE trademark. U.S. Registration 3,991,241 The ?241 registration for jewelry is owned by David Yurman IP LLC. David Yurman is ?America?s most renowned jewelry design house? (see DavidYurman.com.) His jewelry is both definitely upscale and expensive and is sold in his New York City boutique store, selected retail jewelry stores, and a few high-end stores such as Saks Fifth Avenue, Nieman Marcus, etc. Typically, even the least expensive of his jewelry sells at retail for a few hundred dollars. Thus, potential customers for his jewelry will not be making casual purchases, will be knowledgeable and sophisticated purchasers and will be purchasing through retail outlets most of which do not carry any clothing items at all. In any event, prospective purchasers of either the registrant?s jewelry or of Applicant?s disc golf products and related clothing will be knowledgeable purchasers of relatively expensive goods who will not be confused, deceived or mistaken as to the source of registrant?s and Applicant?s differing goods used for entirely different purposes. Applicant MVP Disc Sports does not know of and has not experienced any actual confusion between its goods and registrant?s jewelry. Accordingly, for at least these reasons there is no likelihood of confusion, mistake or deception of perspective purchasers of registrant?s jewelry and Applicant disc golf products and/or clothing. STREAMLINE Registration 4,153,789 The ?789 registration for sunglasses is owned by Live Eyewear Inc. STREAMLINE is a model of specialty sunglasses to be worn over prescription eyewear which Live Eyewear markets in more than 40 countries under its COCOONS brand name to eye care professionals such as opticians, ophthalmologists and optical eye care centers. (See liveeyewear.com.) These sunglasses are relatively expensive, will be purchased by knowledgeable prospective customers under the guidance of eyecare professionals and are marketed through different channels of distribution than that of Applicant?s goods. Applicant does not know of and has not experienced any instance of actual confusion of prospective purchasers of registrant?s sunglasses and Applicant?s goods. Thus, perspective purchasers of registrant?s sunglasses and Applicant?s golf disc products and clothing items will not be confused, mistaken or deceived as to their respective sources. Accordingly, there is no likelihood of confusion, mistake or deception by ordinary prospective purchasers of registrant?s relatively expensive specialty sunglasses and Applicant?s golf disc products and/or related clothing items. Internet Evidence The internet evidence cited in the Office Action is of such a generalized nature that it has little relevance to the likelihood of confusion between Applicant?s goods and any or all of the three registrations specifically relied on in the Office Action. None of this internet evidence lists or indicates that any of the trademarked goods of the U.S. ?414, ?241, and ?789 registrants is listed or shown therein. Nor does any of this internet evidence show that any of these internet entities offer for sale any of Applicant?s golf disc golf products and/or related MVP clothing items.   No Likelihood of Confusion Accordingly, for at least these reasons there is no likelihood of confusion as to the source of Applicant?s goods as identified in the amended descriptions thereof and the source of any of the goods of each of these registrations. Accordingly, withdrawal of the ?2(d) partial refusal and passing of this application to publication for registration is requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing and headgear namely, T-shirts, Polo shirts, Hoodies, Caps, Beanies, wrist bands, back straps, and sport towels in International class 25
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: Clothing and headgear namely, T-shirts, Polo shirts, Hoodies, Caps, Beanies, wrist bands, back straps, and sport towels in International class 25; Clothing and Headgear Namely, T-Shirts, Polo Shirts, Hoodies, Caps being headwear, Beanies, and Wristbands as clothing.Class 025 for Clothing and Headgear Namely, T-Shirts, Polo Shirts, Hoodies, Caps being headwear, Beanies, and Wristbands as clothing.
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 Sporting articles namely, disc golf discs, and disc golf lanyards
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/31/2017 and first used in commerce at least as early as 03/31/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Sporting articles namely, disc golf discs, and disc golf lanyards; Sporting Articles Namely Disc Golf Discs, Disc Golf Lanyards specifically adapted for Disc Golf Bags, and Back Straps specifically adapted for Disc Golf Bags.Class 028 for Sporting Articles Namely Disc Golf Discs, Disc Golf Lanyards specifically adapted for Disc Golf Bags, and Back Straps specifically adapted for Disc Golf Bags.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/31/2017 and first used in commerce at least as early as 03/31/2017 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /William H. Francis/     Date: 08/06/2018
Signatory's Name: William H. Francis
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 2486893500

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: 87656063
Internet Transmission Date: Mon Aug 06 14:59:28 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.X.XXX-20180806145928380
317-87656063-610866d4fc7ee321c7e85ba5eef
aff821ac0e01147c0eaa235d72fdda6f4d52b7b-
N/A-N/A-20180806141919108677