| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87708978 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87708978/mark.png |
| LITERAL ELEMENT | ULTRASOFT |
| 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. |
| ARGUMENT(S) | |
|
Mark: ULTRASOFT Serial No. 87/708,978 Our File: 2709111US1AT
AMENDMENT B
Applicant, by and through counsel, hereby responds to the Office action dated October 12, 2018, as follows:
By requesting that the application be amended to seek registration under Section 2(f)
REMARKS
Response to Section 2(f) Acquired Distinctiveness The Examining Attorney has indicated that if Applicant requests that the application be amended to assert a claim of acquired distinctiveness under Section 2(f), then the Examiner would withdraw the refusal to register under Section 2(e)(1). Applicant respectfully requests that the application be amended to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). The mark has become distinctive of the goods and/or services through the Applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. Applicant has used the mark ULTRASOFT continuously in commerce for more than 11 years.
Conclusion Having fully addressed the Examiner’s concerns, Applicant believes that this application is presently in condition for publication forthwith. Action to this effect is hereby earnestly requested. |
|
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Laura L. Beoglos/ |
| SIGNATORY'S NAME | Laura L. Beoglos |
| SIGNATORY'S POSITION | Attorney of record, OH bar member |
| SIGNATORY'S PHONE NUMBER | 330-244-1174 |
| DATE SIGNED | 11/20/2018 |
| RESPONSE SIGNATURE | /Laura L. Beoglos/ |
| SIGNATORY'S NAME | Laura L. Beoglos |
| SIGNATORY'S POSITION | Attorney of record, OH bar member |
| SIGNATORY'S PHONE NUMBER | 330-244-1174 |
| DATE SIGNED | 11/20/2018 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Nov 20 11:29:46 EST 2018 |
| TEAS STAMP | USPTO/RFR-XX.XX.XX.XXX-20 181120112946297979-877089 78-610803c8dff6e19d56a693 e35ca57323b824baf2bb8afe4 1654f5dd5d11adba5eb-N/A-N /A-20181120112102318917 |
| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Mark: ULTRASOFT
Serial No. 87/708,978
Our File: 2709111US1AT
AMENDMENT B
Applicant, by and through counsel, hereby responds to the Office action dated October 12, 2018, as follows:
By requesting that the application be amended to seek registration under Section 2(f)
REMARKS
Response to Section 2(f) Acquired Distinctiveness
The Examining Attorney has indicated that if Applicant requests that the application be amended to assert a claim of acquired distinctiveness under Section 2(f), then the Examiner would withdraw the refusal to register under Section 2(e)(1). Applicant respectfully requests that the application be amended to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). The mark has become distinctive of the goods and/or services through the Applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. Applicant has used the mark ULTRASOFT continuously in commerce for more than 11 years.
Conclusion
Having fully addressed the Examiner’s concerns, Applicant believes that this application is presently in condition for publication forthwith. Action to this effect is hereby earnestly requested.
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.