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. 87785916 TRIUMPH(Standard Characters, see http://uspto.report/TM/87785916/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

As to Class 14 only, 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. Registrations Nos. 2028061 for TRIUMPH and 1967559 for TRIUMPH and Design, both for “watches,” and both of which are owned by A Classic Time Watch Co., Inc. of New York.

It appears that Registrant failed to pay maintenance fees that were due in these registrations in 2017 and 2016, respectively, and that both registrations are thus cancelled. Accordingly, withdrawal of the refusal is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for jewellery; watches; clocks; watch bands, straps and chains; bracelets; cufflinks; key rings; key fobs; badges; articles made of precious metal or coated therewith; tie clips and pins; watch chains; structural parts for all the aforesaid goods
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: jewellery; watches; clocks; watch bands, straps and chains; bracelets; cufflinks; key rings; key fobs; decorative key fobs; badges; badges of precious metal; articles made of precious metal or coated therewith; articles made of precious metal or coated therewith, namely, lapel badges, trophies, statues and sculptures; tie clips and pins; watch chains; structural parts for all the aforesaid goodsClass 014 for jewellery; watches; clocks; watch bands, straps and chains; bracelets; cufflinks; key rings; decorative key fobs; badges of precious metal; articles made of precious metal or coated therewith, namely, lapel badges, trophies, statues and sculptures; tie clips and pins; watch chains; structural parts for all the aforesaid goods
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 018 for luggage; trunks; umbrellas; belts, bands and straps; briefcases; key cases; back packs; rucksacks; bags; boxes; tool belts; wallets and purses; structural parts for all of the aforesaid goods
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: luggage; trunks; umbrellas; belts, bands and straps; fitted belts for luggage, saddle belts; leather shoulder belts; straps for luggage, leather shoulder straps, all-purpose leather straps; briefcases; key cases; bags; back packs; boxes; rucksacks; tool belts; handbags; travelling bags; leather bags; weekend bags; duffel bags; suit bags; carry-on bags; tote bags; tool bags sold empty; boxes of leather; wallets and purses; structural parts for all of the aforesaid goodsClass 018 for luggage; trunks; umbrellas; fitted belts for luggage, saddle belts; leather shoulder belts; straps for luggage, leather shoulder straps, all-purpose leather straps; briefcases; key cases; back packs; rucksacks; handbags; travelling bags; leather bags; weekend bags; duffel bags; suit bags; carry-on bags; tote bags; tool bags sold empty; boxes of leather; wallets and purses; structural parts for all of the aforesaid goods
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.

ADDITIONAL STATEMENTS
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)
Response Signature
Signature: /sgs/     Date: 09/06/2018
Signatory's Name: Stephanie G. Stella
Signatory's Position: Attorney of Record, New York, Georgia Bar Member

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: 87785916
Internet Transmission Date: Thu Sep 06 09:53:38 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201809060953380395
62-87785916-610e47d18df86acf46ef3364a87e
7942e810e38fe3fbae8aa369788158dbd21e-N/A
-N/A-20180906091724500748