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. 87911903 IMPERIAL (Stylized and/or with Design, see http://uspto.report/TM/87911903/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Boats; yachts; ships; pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, floats; vehicles for locomotion by water, namely, yachts, boats; structural parts and fittings for boats, yachts, ships, pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, floats; and vehicles for locomotion by water, namely, yachts and boats
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], 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.

Proposed:
Tracked Text Description: Boats; yachts; ships; pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, floats; pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, and float tubes, namely, lightweight inflatable fishing crafts; vehicles for locomotion by water, namely, yachts, boats; structural parts and fittings for boats, yachts, ships, pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, floats; structural parts and fittings for boats, yachts, ships, pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, and float tubes, namely, lightweight inflatable fishing crafts; and vehicles for locomotion by water, namely, yachts and boats; vehicles for locomotion by water, namely, yachts and boatsClass 012 for Boats; yachts; ships; pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, and float tubes, namely, lightweight inflatable fishing crafts; vehicles for locomotion by water, namely, yachts, boats; structural parts and fittings for boats, yachts, ships, pleasure water crafts, namely, small power boats, personal jet boats, water scooters, electric boats, rafts, and float tubes, namely, lightweight inflatable fishing crafts; vehicles for locomotion by water, namely, yachts and boats
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Books, maps, printed charts, printed plans and drawings all relating to nautical and aviation matters and lifestyle
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], 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.

Proposed: Class 016 for Books, maps, printed charts, printed plans and drawings all relating to nautical and aviation matters and lifestyle
Deleted Filing Basis: 44(e)
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 036 for Financial advisory and consultancy services for yacht, boat or ship owners and charterers; financial arrangement services, namely, arranging of loans for boat, marine and aviation brokerage for hire-purchase, hire-purchase financing services, and financial management of yacht operations for yacht, boat and ship owners and charterers; insurance advisory, arrangement and consultancy services for yacht, boat and ship owners and charterers; yacht brokerage services; real estate agencies; real estate management and rental property management; financial services related to real estate, namely, real estate note brokerage and mortgage; business finance procurement services
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], 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.

Proposed:
Tracked Text Description: Financial advisory and consultancy services for yacht, boat or ship owners and charterers; financial arrangement services, namely, arranging of loans for boat, marine and aviation brokerage for hire-purchase, hire-purchase financing services, and financial management of yacht operations for yacht, boat and ship owners and charterers; insurance advisory, arrangement and consultancy services for yacht, boat and ship owners and charterers; yacht brokerage services; real estate agencies; real estate management and rental property management; financial services related to real estate, namely, real estate note brokerage and mortgage; financial services related to real estate, namely, real estate note brokerage and mortgage brokerage; business finance procurement servicesClass 036 for Financial advisory and consultancy services for yacht, boat or ship owners and charterers; financial arrangement services, namely, arranging of loans for boat, marine and aviation brokerage for hire-purchase, hire-purchase financing services, and financial management of yacht operations for yacht, boat and ship owners and charterers; insurance advisory, arrangement and consultancy services for yacht, boat and ship owners and charterers; yacht brokerage services; real estate agencies; real estate management and rental property management; financial services related to real estate, namely, real estate note brokerage and mortgage brokerage; business finance procurement services
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, in the nature of organizing social entertainment events; educational and training services, namely, providing classes, seminars, workshops in the fields of marine, nautical and lifestyle; organization of training lectures and seminars; hosting, providing, organizing, planning, arranging, conducting and holding of cultural, variety, musical and theatrical shows, concerts, lectures, educational conferences, displays in the fields of marine, boating, water safety and lifestyle, exhibitions, awards ceremonies, sporting, boating events and seminars; distribution of printed training and educational materials of others in the field of marine, nautical and lifestyle; publishing training manuals; providing online nondownloadable books, maps, charts, plans and drawings; on-line electronic publishing services of books, periodicals; entertainment services, namely, hosting, providing, organizing, planning, arranging, conducting and holding of boat shows, concerts, displays relating to yachts, boating, and hospitality and exhibitions relating to yachts, boating and hospitality, awards ceremonies, and social, sporting and cultural entertainment events in the fields of yachting, boating, and hospitality; educational and training services, namely, organization of training lectures, seminars, and educational conferences in the fields of yachting, boating, and hospitality; dissemination of training and educational materials of others in the field of yachts, boating, travel and lifestyle; publishing and online electronic publishing of training manuals, books, maps, charts, plans, and drawings in the fields of yachting, boating and hospitality lifestyle and industries; arranging of tours of areas of historical, cultural, marine or lifestyle interest
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], 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.

Proposed:
Tracked Text Description: Entertainment services, in the nature of organizing social entertainment events; educational and training services, namely, providing classes, seminars, workshops in the fields of marine, nautical and lifestyle; organization of training lectures and seminars; hosting, providing, organizing, planning, arranging, conducting and holding of cultural, variety, musical and theatrical shows, concerts, lectures, educational conferences, displays in the fields of marine, boating, water safety and lifestyle, exhibitions, awards ceremonies, sporting, boating events and seminars; hosting, providing, organizing, planning, arranging, conducting and holding of cultural, variety, musical and theatrical shows, concerts, lectures, educational conferences, displays in the fields of marine, boating, water safety and lifestyle, nautical exhibitions, nautical awards ceremonies, sporting, boating events and seminars; distribution of printed training and educational materials of others in the field of marine, nautical and lifestyle; publishing training manuals; providing online nondownloadable books, maps, charts, plans and drawings; providing online nondownloadable books, maps, charts, plans and drawings in the fields of marine, boating, water safety and hospitality; on-line electronic publishing services of books, periodicals; entertainment services, namely, hosting, providing, organizing, planning, arranging, conducting and holding of boat shows, concerts, displays relating to yachts, boating, and hospitality and exhibitions relating to yachts, boating and hospitality, awards ceremonies, and social, sporting and cultural entertainment events in the fields of yachting, boating, and hospitality; educational and training services, namely, organization of training lectures, seminars, and educational conferences in the fields of yachting, boating, and hospitality; dissemination of training and educational materials of others in the field of yachts, boating, travel and lifestyle; publishing and online electronic publishing of training manuals, books, maps, charts, plans, and drawings in the fields of yachting, boating and hospitality lifestyle and industries; arranging of tours of areas of historical, cultural, marine or lifestyle interest; arranging of guided tours of areas of historical, cultural, marine or lifestyle interestClass 041 for Entertainment services, in the nature of organizing social entertainment events; educational and training services, namely, providing classes, seminars, workshops in the fields of marine, nautical and lifestyle; organization of training lectures and seminars; hosting, providing, organizing, planning, arranging, conducting and holding of cultural, variety, musical and theatrical shows, concerts, lectures, educational conferences, displays in the fields of marine, boating, water safety and lifestyle, nautical exhibitions, nautical awards ceremonies, sporting, boating events and seminars; distribution of printed training and educational materials of others in the field of marine, nautical and lifestyle; publishing training manuals; providing online nondownloadable books, maps, charts, plans and drawings in the fields of marine, boating, water safety and hospitality; on-line electronic publishing services of books, periodicals; entertainment services, namely, hosting, providing, organizing, planning, arranging, conducting and holding of boat shows, concerts, displays relating to yachts, boating, and hospitality and exhibitions relating to yachts, boating and hospitality, awards ceremonies, and social, sporting and cultural entertainment events in the fields of yachting, boating, and hospitality; educational and training services, namely, organization of training lectures, seminars, and educational conferences in the fields of yachting, boating, and hospitality; dissemination of training and educational materials of others in the field of yachts, boating, travel and lifestyle; publishing and online electronic publishing of training manuals, books, maps, charts, plans, and drawings in the fields of yachting, boating and hospitality lifestyle and industries; arranging of guided tours of areas of historical, cultural, marine or lifestyle interest
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017890267 registered 08/09/2018 with a renewal date of __________ and an expiration date of 04/20/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

The applicant's current attorney information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      US
The docket/reference number is 62GL-272908.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The applicants proposed attorney information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      United States
The docket/reference number is 62GL-272908.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is jpietrini@sheppardmullin.com

Jill M. Pietrini submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JILL M. PIETRINI. JILL M. PIETRINI of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      US
The docket/reference number is 62GL-272908.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is trademarkscc@sheppardmullin.com; rwalsh@smrh.com; rlhudson@sheppardmullin.com

The applicants proposed correspondence information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      United States
The docket/reference number is 62GL-272908.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is TrademarksCC@sheppardmullin.com; jpietrini@sheppardmullin.com; rwalsh@sheppardmullin.com

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: /jillpietrini/     Date: 10/01/2019
Signatory's Name: Jill M. Pietrini
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: (310) 228-3700

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JILL M. PIETRINI
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   
   1901 AVENUE OF THE STARS, SUITE 1600
   LOS ANGELES, California 90067
Mailing Address:    Jill M. Pietrini
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   1901 AVENUE OF THE STARS, SUITE 1600
   LOS ANGELES, California 90067
        
Serial Number: 87911903
Internet Transmission Date: Tue Oct 01 21:33:29 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201910012133296
29983-87911903-61077e4f014be3246617e154a
d84dcf6d62218a150e8401cd7a538cfccf2ac988
2-N/A-N/A-20191001205530010168