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. 87662346 TRIUMPH (Stylized and/or with Design, see http://uspto.report/TM/87662346/mark.png) has been amended as follows:

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

Identification of Goods

The Examining Attorney has refused registration of the application on the grounds the identification is indefinite/overbroad.  Applicant has amended the identification substantially as suggested by the Examining Attorney, thus obviating the refusal.  The amended identification is within the scope of the application as filed.

§ 2(d) Likelihood of Confusion

The Examining Attorney has refused registration of the application under Trademark Act § 2(d) on the ground of likelihood of confusion in view of:

• U.S. Registration No. 4557952 for TRIUMPH & Design for “clothing, namely, panties, brassieres, bodices, corsets, corselets, girdles, hip-shaping garments, garter belts, suspender belts, bathing costumes, trunks, bath robes, bikinis, pajamas, night dresses, t-shirts, shorts, dresses, hosiery, skirts; headgear, namely, caps,” in Class 25, and “retail clothing stores,” in Class 35;

   

• U.S. Registration No. 4416811 for TRIUMPH THE MAKER OF LINGERIE for “clothing, namely, panties, brassieres, bodices, corsets, corselets, girdles, hip-shaping garments, suspender belts, dancing belts, bathing costumes, trunks, bath gowns, bath jackets, bikinis, pajamas, night dresses, t-shirts, shorts, dresses, hosiery, skirts; headgear, namely, caps,” in Class 25, and “retail store services featuring clothing,” in Class 35; and

   

• U.S. Registration No. 3598689 for TRIUMPH & Design for “Clothing, namely, panties, brassieres, bodices, corsets, corselets, girdles, hip-shaping garments, suspender belts, dancing belts, bathing costumes, trunks, bath gowns, bath jackets, bikinis, pajamas, night dresses, t-shirts, shorts, [ dresses, ] hosiery, [ skirts ]; [ headgear, namely, caps ],” in Class 25, and “retail store services featuring clothing,” in Class 35,

   

  all of which are owned by Triumph Intertrade AG, of Switzerland.  

  Applicant submits that it has a longstanding relationship with cited Registrant Triumph Intertrade AG.  Applicant owns U.S. Registration No. 5029574 for the mark TRIUMPH (in standard character form) for, in relevant part:

clothing, namely, footwear, headwear, namely, jeans, t-shirts, shirts, blouses, jackets, trousers, shorts, caps, hats, gloves, scarves, socks, ties, jumpers, cardigans, sweaters, sweatshirts, track suits, thermal base layers, shoes, boots, sports shoes; not including underwear, foundation garments, swimwear or nightwear, in Class 25.

 

(the “’574 Registration”).  In connection with the ’574 Registration, Applicant submitted the enclosed Consent Agreement (“Agreement”) executed by both Applicant and cited Registrant (see Exhibit A).  The Agreement eliminated any concern over potential likelihood of confusion between the same marks in connection with the same goods and services now at issue, and thus likewise obviates the refusals in this case.

The Agreement demonstrates (1) consent by the Parties; (2) a clear indication that the goods and/or services travel in separate trade channels; (3) that the Parties agree to restrict their fields of use; (4) that the Parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and (5) that the marks have been used for a period of time without evidence of actual confusion.

Applicant is a manufacturer and distributor of iconic motorcycles, and its present application is for use of its mark as a secondary source indicator of those goods. Registrant, by contrast, is a manufacturer of clothing, particularly, women’s underwear and lingerie, and uses the TRIUMPH marks in connection with those goods.  Applicant’s motorcycles are far more expensive and marketed to a far more sophisticated and discerning consumer than Registrant’s undergarments.  Accordingly, it is highly unlikely those consumers would confuse Applicant’s and Registrant’s goods and services.

In view of Applicant’s ownership of the ’574 Registration, the relationship between the Parties, and the Parties’ enclosed Consent Agreement, there is no likelihood of confusion between the Parties’ marks.  Accordingly, withdrawal of the refusals is respectfully requested.

EVIDENCE

Evidence in the nature of EXHIBIT A – Consent Agreement, which has been executed by both Applicant and Triumph Intertrade AG.

Related Registration

            Applicant owns U.S. Registration No. 5029574 for the mark TRIUMPH (in standard character form).

EVIDENCE
Evidence in the nature of EXHIBIT A - Consent Agreement, which has been executed by both Applicant and Triumph Intertrade AG has been attached.
Original PDF file:
evi_38111352-20180206104602942990_._T0725.20006US00.consentagreement.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for clothing; footwear; headgear
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number 3263195 filed 10/13/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: clothing; clothing, thermal base layers, footwear and headgear; footwear; not including underwear, foundation garments, swimwear or nightwear; headgearClass 025 for clothing, thermal base layers, footwear and headgear; not including underwear, foundation garments, swimwear or nightwear
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number 3263195 filed 10/13/2017]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK00003263195 registered 10/13/2017 with a renewal date of __________ and an expiration date of __________ ], 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.
Original PDF file:
FRU0-38111352-104602942_._T0725.20006US00.UK.reg.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5029574.


Miscellaneous Statement
If it is convenient for the Examining Attorney and if it is believed a telephone conference will further the prosecution of this application, Applicant's undersigned counsel encourages a telephone call from the Examining Attorney. In view of the foregoing, Applicant submits that the application is in condition for publication. Favorable action is hereby solicited.


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /sgs/     Date: 02/06/2018
Signatory's Name: Stephanie G. Stella
Signatory's Position: Attorney of Record, VA State Bar Member

Signatory's Phone Number: 617-646-8000

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: 87662346
Internet Transmission Date: Tue Feb 06 11:00:28 EST 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201802061100289631
38-87662346-510f74ca292a64d94a32ebc5331c
c7ab621a71e2f321a14559ae71db7e7cbce2c-N/
A-N/A-20180206104602942990