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. 87949901 DENVER NUGGETS (Stylized and/or with Design, see http://uspto.report/TM/87949901/mark.png) has been amended as follows:

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

Disclaimer The Examining Attorney has requested that the Applicant disclaim the wording "DENVER" because it is primarily geographically descriptive of the origin of applicant?s goods, and thus is an unregistrable component of the mark. Applicant seeks to amends the instant application under TMEP 212.02(f)(i) to claim acquired distinctiveness, or 2(f) in part, for ?DENVER? on the basis of prior registrations and/or, in the alternative as necessary, other evidence as below described. 2(f) IN PART 2(f) in Part Permitted for ITU Applications Under TMEP 1212.09(b), Applicant may claim 2(f) in part for its mark, which was filed as an intent-to-use application under ?1(b). Prior Registrations Applicant is the owner of US Trademark Registrations 1903531, 1903645, 1094036, 1905038, 1905156, 2235704, 2504689, 2512671, 2563542, 2862887, 2907534 and 3078918. All of the foregoing registrations, copies of which are attached hereto, reflect 2(f) acquired distinctiveness in part for ?DENVER?. Other Evidence Applicant has used the word "DENVER" in connection with its DENVER NUGGETS trademarks for basketball- related goods and services since 1974. Applicant has long-used ?DENVER? in connection with its DENVER NUGGETS trademarks on a wide variety of merchandise (See Exhibit A). Pursuant to Section 2(f) of the Lanham Act, the word ?DENVER? has become distinctive as used in connection with the goods identified in the application. Due to the manner in which geographic designations like "DENVER" are used in professional sports, geographic designators have become synonymous with the names of the teams. Much of a team's identity comes from its connection with the city where its home games are played. Such city/team affiliations have historically been found throughout professional sports, such as Chicago with the Bulls and Blackhawks, Los Angeles with the Lakers and Clippers, Boston with the Celtics, Dallas with the Cowboys, and New York with the Yankees, Knicks and Rangers. The consuming public understands that sports teams are commonly identified by the geographic designations where home games are played. Consumers encountering Applicant?s marks immediately understand that it represents a sports team from the city of Denver. The city/team association has been reinforced in broadcast, print and electronic media for many years. Indeed, it is not uncommon for teams to be identified solely by their sport and city affiliations. In the media, team scores and team standings are routinely reported on a daily basis by sport and city affiliation rather than team name. In professional sports, the city affiliations are in fact synonymous with the names of the teams and have come to mean much more than merely a geographic designation of origin. (See http://www.nba.com/standings and http://www.nhl.com/standings). Since the DENVER Nuggets basketball team first entered the NBA as an expansion team in 1974, millions of Americans have watched Applicant's basketball games each year on NBA broadcasts throughout the United States via major television networks, such as NBC and ABC; national cable television networks, such as TNT, TBS, and TSN; the NBA-owned cable television channel, NBA.TV; satellite television network DirecTV; numerous local and regional broadcasters around the country, as well as national radio broadcasts on ESPN RADIO. In addition, highlights from Applicant's games are shown on a daily basis during the season throughout the country on local news broadcasts and on the league's website. There is no doubt that Applicant?s use of ?DENVER? has had the time and received the attention required to warrant a claim of acquired distinctiveness. Accordingly, based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the request for disclaimer of ?DENVER? and allow the instant application to proceed to publication.

EVIDENCE
Evidence in the nature of Use of DENVER on various goods/services; copies of Certificates of Registration has been attached.
Original PDF file:
evi_6662268-20190326135754372675_._DENVER_2_f__Exhibit_A.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_6662268-20190326135754372675_._Denver_Nuggets_Cert_Copies.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
DENVER 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.


SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
DENVER has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 1903531, 1903645, 1094036, 1905038, 1905156, 2235704, 2504689, 2512671, 2563542, 2862887, 2907534 and 3078918


SIGNATURE(S)
Declaration Signature

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.

Signature: /avg/      Date: 03/26/2019
Signatory's Name: Anil V. George
Signatory's Position: Attorney of record; NY bar member
Signatory's Phone Number: 212-407-8330


Response Signature
Signature: /avg/     Date: 03/26/2019
Signatory's Name: Anil V. George
Signatory's Position: Attorney of record; NY bar member

Signatory's Phone Number: 212-407-8330

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: 87949901
Internet Transmission Date: Tue Mar 26 14:05:38 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.X-2019032614053880014
4-87949901-6209e5d1d2fad8a9756fd27a4c18f
8ac5511a16ed3adb889e1ca88742bc88f0-N/A-N
/A-20190326135754372675