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. 87910600 STAMPEDE(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87910600/large) has been amended as follows:

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

Applicant is in receipt of the Office Action dated September 4, 2018, the contents of which are duly noted. In response thereto, Applicant respectfully submits the following.

1. Likelihood of Confusion - Class 41 Only

The Examining Attorney has refused registration on the grounds that registration of Applicant’s mark STAMPEDE would cause confusion with prior registration no. 1817553 for STAMPEDE in the name of Nancy’s Pictures, Inc.  The registration covers the following services:

Class 41:  Entertainment services; namely, the production and distribution of motion picture films, videotapes, television shows and sound recordings; namely, phonograph records, audio magnetic tapes, compact discs, digital audio tapes, compact disc videos, and laser discs; and sheet music publication services

Applicant respectfully submits that after a conducting a cursory search in November 2018, Applicant believes that the owner of the cited registration has abandoned the cited mark.  Applicant is filing concurrently herewith a Request to Divide Classes 35 and 36 from the application so that the application can proceed in these classes, and Applicant respectfully requests that the Request to Divide be processed before the Examining Attorney acts on this Office Action Response.  Applicant will be filing a Petition to Cancel the cited registration to remove it as an obstacle to registration of Applicant’s mark in Class 41. 

 

2.  Identification of Services

Applicant has amended the following identification of services in the appropriate fields of the TEAS online response form:

Class 35:  Business services, namely, business consultation, business advisory and business management services in the entertainment industry; advertising services

Class 36:  Financial services, namely, providing venture capital, development capital, private equity and investment funding services; venture capital services, namely, venture capital advisory services and providing financing for entertainment and educational projects; financing and funding services, namely, project financing and venture capital funding; investment services, namely, investment advice in the entertainment industry

Class 41:  Entertainment services, namely, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, namely, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, namely, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, namely, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing service

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business services, including, business consultation, business advisory and business management services in the entertainment industry; advertising services
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: Business services, including, business consultation, business advisory and business management services in the entertainment industry; Business services, namely, business consultation, business advisory and business management services in the entertainment industry; advertising servicesClass 035 for Business services, namely, business consultation, business advisory and business management services in the entertainment industry; advertising services
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 services, including, providing venture capital, development capital, private equity and investment funding services; venture capital services, including, venture capital advisory services and providing financing for entertainment and educational projects; financing and funding services, including, project financing and funding; investment services, including, investment advice in the entertainment industry
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: Financial services, including, providing venture capital, development capital, private equity and investment funding services; Financial services, namely, providing venture capital, development capital, private equity and investment funding services; venture capital services, including, venture capital advisory services and providing financing for entertainment and educational projects; venture capital services, namely, venture capital advisory services and providing financing for entertainment and educational projects; financing and funding services, including, project financing and funding; financing and funding services, namely, project financing and venture capital funding; investment services, including, investment advice in the entertainment industry; investment services, namely, investment advice in the entertainment industryClass 036 for Financial services, namely, providing venture capital, development capital, private equity and investment funding services; venture capital services, namely, venture capital advisory services and providing financing for entertainment and educational projects; financing and funding services, namely, project financing and venture capital funding; investment services, namely, investment advice in the entertainment industry
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 041 for Entertainment services, including, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, including, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, including, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, including, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing services
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: Entertainment services, including, development, creation, production and post-production services of multimedia entertainment content; Entertainment services, namely, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, including, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, namely, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, including, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, namely, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, including, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; custom writing services, namely, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing servicesClass 041 for Entertainment services, namely, development, creation, production and post-production services of multimedia entertainment content; direction of making motion picture films, television programs, radio programs, and audio and video recordings; production of motion picture films, television programs, radio programs, and audio and video recordings; entertainment services, namely, direction of making multimedia entertainment content for distribution via a global computer network and mobile platforms; entertainment services, namely, production of multimedia entertainment content for distribution via a global computer network and mobile platforms; custom writing services, namely, scriptwriting for television, films and multimedia entertainment content for non-advertising purposes; screenplay writing services
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.

SIGNATURE(S)
Response Signature
Signature: /Samuel Fifer/     Date: 02/17/2019
Signatory's Name: Samuel Fifer
Signatory's Position: Attorney of Record, Illinois bar member

Signatory's Phone Number: 312-876-3114

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: 87910600
Internet Transmission Date: Tue Feb 19 14:08:51 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201902191408518
68068-87910600-620f75c3e8144d18d80c1ed11
a641ae7c9ca78586562ea3bc6ae8ad5b26c8e33d
-N/A-N/A-20190213134044490730